ADDITION'/U  C0?|r?  CH  H'S  BOOKWAY 
BE  HAD  C.'J  APPLICATION   TO  THE 

FEDERAL  rUBLI3H:NG  ASSOCIATION, 
PITTSBURGH,  PA. 
PRICK, 


presented  to  the 
UNIVERSITY  LIBRARY 
UNIVERSITY  OF  CALIFORNIA 
SAN  DIEGO 

by 

MRS.  FRANK  DRUMMOND 


NOTES    ON   PATENTS 
AND  PATENT  PRACTICE 


BY 
PAUL  SYNNESTVEDT  LL.  B. 

Member  of  the  Bar  of  the  U.  S.  Supreme  Court;  of  the  U.  S.  Circuit  and  District  Courts; 
of  the  Supreme  Court  of  Illinois,  and  member  of  the  American  Bar  Association 


PITTSBURGH,  PA. 

FEDERAL  PUBLISHING  ASSOCIATION 

FRICK  BUILDING 

1906 


COPYKIGHT,  1906 

BY 
PAUL  SYNNESTVEDT 


PATENTS  AND  PATENT  PRACTICE 
Contents. 

CHAPTER   I. 

Page. 
The  Nature  of  a  Patent  Right   7 

CHAPTER  II. 

Patent    Office    Practice    Compared    With    Court 

Practice   25 

CHAPTER  III. 
Relations  Between  an  Inventor  and  His  Attorney.       29 

CHAPTER  IV. 

Preparation  of  the  Papers  for  an  Application  for 

Patent    35 

CHAPTER  V. 

First  Steps  on  the  Part  of  the  Patent  Office  with 
Reference  to  the  Application,  on  and  After 
Filing  57 

CHAPTER  VI. 

Consultation  of  Attorney  and  Client  on  Receipt  of 

Office  Action,  and  Preparation  of  Amendment.     67 

CHAPTER  VII. 
Legal  Effect  of  Amendatory  Actions  75 

CHAPTER  VIII. 

Amendments  Accompanied  by  Affidavits   81 

CHAPTER  IX. 
Interferences   85 

CHAPTER   X. 

Final  Notice  of  Allowance;  Payment  of  Final  Fee; 
Transfer  of  Files  to  Issue  Division;  With- 
drawal of  Cases  from  Issue;  Issue  of  Patent..  95 


PREFACE. 


This  work  may  properly  be  regarded  only  as 
a  compilation  of  notes  on  patents  and  patent 
practice  based  on  the  personal  experience  of  the 
author  for  a  number  of  years  past,  and  is  intended 
to  supply  a  need  for  some  concise  presentation  of 
certain  fundamental  rules  which  may  prove 
especially  useful  as  an  aid  in  the  preparation  of 
patent  applications,  and  which  may  incidentally 
serve  the  purpose  of  helping  to  systematize  and 
correct  the  practice  in  several  respects. 

It  is  not  intended  that  this  small  treatise  cover 
any  particular  part  of  the  subject  exhaustively,  nor 
is  it  the  intention  in  this  work  to  take  up  the  con- 
sideration of  various  authorities,  which  is  some- 
thing that  is  fully  covered  in  excellent  digests  at 
present  available,  and  in  which  such  line  of  en- 
deavor is  much  more  fully  and  properly  carried 
out  than  would  be  possible  in  a  volume  of  this 
character. 

PAUL  SYNNESTVEDT. 
Pittsburgh,  Pa.,  1906. 


CHAPTER  I. 


The  Nature  of  a  Patent  Right. 


Some  time  ago  the  writer  was  accorded  the 
privilege  of  presenting  a  paper  before  the  Western 
Railway  Club,  in  Chicago,  entitled  "What  a  Patent 
is  Not,"  and  at  a  later  date  submitted  another 
treatise  along  somewhat  similar  lines  before  the 
Pittsburgh  Railway  Club,  and  as  the  subject  matter 
of  both  papers  seemed  to  be  received  with  some  in- 
terest by  the  members  of  those,  clubs,  use  will  be 
made  of  some  of  the  ideas  contained  in  the  same  in 
presenting  the  initial  chapter  of  this  book. 

The  reason  for  the  negative  form  of  title  "What 
a  Patent  is  Not,"  lies  in  the  fact  that  in  considering 
the  subject  of  patent  rights,  as  well  as  of  other 
things,  it  is  difficult  to  get  a  clear  comprehension 
as  to  what  anything  is  without  some  pretty  good 
idea  also  as  to  what  it  is  not. 


In  considering  the  nature  of  a  patent  right,  it 
is  next  to  be  noted  that  the  grant  of  a  patent  is  not 
made,  as  is  often  assumed  to  be  the  case,  for  the 
sake  of  the  inventor,  but  from  the  standpoint  of 
public  policy,  for  the  sake  of  public  good. 

That  all  patentees  who  hold  valid  patents  have 
benefited  the  community  is  obvious  from  the  fact 
that  in  order  to  sustain  the  validity  of  any  patent 
it  must,  amongst  other  tests,  stand  the  tests  of 
novelty  and  utility;  that  is,  it  must  be  established 
that  the  invention  is  new,  and  adds  something  in 
the  nature  of  improvement  of  a  useful  character  to 
the  arts  as  the  state  of  the  same  existed  before  the 
creation  of  the  invention.  If  a  patent  grant  took 
from  the  public  the  right  in  any  thing  of  a  determi- 
native or  definite  character,  or  a  right  in  any  prop- 
erty formerly  possessed  by  the  public,  it  would  be 
inconsistent  with  the  spirit  of  our  age  and  obnoxious 
to  people  of  all  classes,  as  was,  in  fact,  the  case 
with  some  of  the  older  statutes  and  special  privi- 
leges which  existed  at  different  times  several 
centuries  past  in  England. 

In  the  words  of  Bentham,  in  his  Rationale  of 
Rewards,  published  several  generations  ago,  a 
patent  "is  an  i  nstance  of  a  reward  peculiarly 
adapted  to  the  nature  of  the  service,  and  adapts 
itself  with  the  utmost  nicety  to  those  rules  of  pro- 


portion  to  which  it  is  most  difficult  for  reward, 
artificially  instituted  by  the  legislature  to  conform. 
If  confined,  as  it  ought  to  be,  to  the  precise  point 
in  which  the  originality  of  the  invention  consists, 
it  is  conferred  with  the  least  possible  waste  of  ex- 
pense. It  causes  a  service  to  be  rendered,  which 
without  it,  a  man  would  not  have  a  motive  for 
rendering;  and  that  only  by  forbidding  others  from 
doing  that  which,  were  it  not  for  that  service,  it 
would  not  have  been  possible  for  them  to  have 
done.  Even  with  regard  to  such  inventions,  for 
such  there  will  be,  where  others  besides  him  who 
possesses  the  reward  have  scent  of  the  invention, 
it  is  still  of  use  by  stimulating  all  parties  and 
setting  them  to  strive  which  shall  first  bring  the 
discovery  to  bear.  With  all  this  it  unites  every 
-property  that  can  be  wished  for  in  a  reward.  It 
is  variable,  equable,  commensurable,  characteristic, 
exemplary,  frugal,  promotive  of  perseverance, 
subservient  to  compensation,  popular  and  reason- 
able." 

That  the  patent  system  is  distinguished  by 
having  an  origin  of  reasonable  antiquity  is  evident 
from  the  fact  that  we  find  that  in  the  reign  of 
Edward  III,  on  representation  to  him  of  the 
feasability  of  making  a  "philosopher's  stone,"  that 
monarch  "issued  a  commission  of  two  friars  and 


two  aldermen  to  inquire  into  the  matter,  and,  on 
their  reporting  in  its  favor,  granted  to  them  and 
their  assigns  the  sole  privilege  of  making  the 
philosopher's  stone." 

Nearly  all  of  the  earliest  forms  of  such  grants 
in  England,  dating  several  centuries  back,  were  of 
similar  characteristics  to  those  of  our  present  patent 
grant,  but  the  special  privileges  of  those  early  days 
were  by  degrees  perverted  from  their  primary 
purpose,  and,  under  the  pretense  of  a  better 
government  of  trade,  the  prerogative  of  the  Crown 
was  employed,  in  return  for  pecuniary  considera- 
tions, in  sanctioning  certain  individuals  and  cor- 
porations in  the  practice  of  various  oppressive 
monopolies.  The  evil  of  this  grew  until  in  the 
reign  of  Elizabeth,  large  numbers  of  the  necessaries 
of  life  were  controlled  by  such  monopolistic  paten- 
tees. 

Thus,  at  one  time,  there  were  included  in  such 
oppressive  special  grants  the  exclusive  rights  of 
trade  in  salt,  iron,  powder,  vinegar,  paper,  starch, 
tin,  sulphur,  and  a  multitude  of  others. 

The  monopolists  were  so  exorbitant  in  their 
demands  that  they  raised  the  price  of  salt  from  16 
pence  a  bushel  to  14  or  15  shillings.  Such  high 
profits  naturally  began  to  attract  intruders  upon 
their  commerce,  so  that  in  order  to  secure  them- 


10 


selves  against  encroachment  the  patentees  were 
armed  with  high  and  arbitrary  powers  by  the 
councils,  by  which  they  were  able  to  oppress  the 
people  at  pleasure,  and  to  exact  money  from  such 
as  they  thought  proper  to  accuse  of  interfering 
with  their  patent. 

Thus  the  patentees  of  saltpetre  were  granted 
the  power  of  entering  every  house,  "and  of  com- 
mitting what  havoc  they  pleased,  in  stables,  cellars, 
or  wheresoever  they  suspected  saltpetre  might  be 
gathered,  and  they  commonly  extorted  money  from 
those  who  desired  to  free  themselves  from  this 
damage  or  trouble ;  and  while  all  domestic  inter- 
course was  thus  restrained,  lest  any  scope  should 
remain  for  industry,  almost  every  species  of  foreign 
commerce  was  confined  to  exclusive  companies, 
who  bought  and  sold  at  any  price  they  themselves 
thought  proper  to  offer  or  exact."  (Coryton  on 
Patents,  ed.  of  1855,  p.  28.) 

"Even  Elizabeth's  House  of  Commons  rang 
with  angry  complaints.  On  the  20th  November, 
1601,  a  great  debate  upon  the  subject  took  place, 
on  an  attempt  by  Lawrence  Hyde  to  introduce  'A 
Bill  for  the  Explanation  of  the  Common  Law  in 
certain  Cases  of  Letters  Patent.'  After  much  dis- 
cussion as  to  whether  the  proceedings  should  be" 
by  bill  or  by  petition  to  Her  Majesty,  but  before 


11 


anything  was  concluded  upon,  the  Queen  sent  a 
message  to  the  House  importing  that  the  monop- 
olies should  be  revoked."  (ibid.) 

In  excusing  the  objectionable  grants,  the 
Queen,  in  a  message  to  the  Commons,  said :  "Since 
I  was  Queen,  yet  never  did  I  put  my  pen  to  any 
grant  but  upon  pretense  and  semblance  made  unto 
me  that  it  was  both  good  and  beneficial  to  the  sub- 
jects in  general,  though  a  private  profit  to  some  of 
my  ancient  servants  who  have  deserved  well,  but 
the  contrary  being  found  by  experience,  I  am  ex- 
ceedingly beholden  to  such  subjects  as  would  move 
the  same  at  first.  That  my  grants  should  be  griev- 
ous to  my  people,  and  oppressions  to  be  privileged 
under  color  of  our  patents,  our  kingly  dignity  shall 
not  suffer  it;  yea,  when  I  heard  it  I  could  give  no 
rest  to  my  thoughts  till  I  had  reformed  it." 

While  subsequently  to  the  events  just  narrated 
special  grants  in  restraint  of  common  trade  were 
gradually  reduced  in  number  to  practically  nothing, 
exclusive  privileges  in  reward  of  invention  have 
remained,  and  there  is  reason  to  believe  that  the 
practice  of  making  grants  of  the  sole  use  of  in- 
ventions originated  in  England,  and  that  the 
English  system  of  rewarding  inventors  has  since 
been  copied  more  or  less  closely  by  almost  every 
European  power.  Our  own  system  is  based  upon 


12 


it  in  many  respects,  although  differing  greatly  in 
organization  and  detail,  and  the  characteristics  or 
nature  of  the  grant  remain  to  this  day,  after  cen- 
turies of  time,  substantially  the  same, — the  securing 
to  an  inventor,  for  a  limited  time,  the  right  to  ex- 
clude others  from  practicing  his  invention  save  on 
license  secured  from  him,  wherefrom  he  secures 
his  pecuniary  reward. 

Most  men  who  are  blessed  with  at  least 
ordinarily  astute  minds,  naturally  suppose  that 
when  an  inventor  takes  out  a  patent  he  gets  there- 
by a  right  to  proceed  unmolested  with  the  manu- 
facture, sale  and  use  of  his  invention.  That  is  not 
the  case,  however,  as  we  shall  see  from  a  little  in- 
vestigation. 

The  origin  of  the  erroneous  idea  above  stated 
may,  perhaps,  be  traced  to  the  language  employed 
in  the  patent  grant  itself,  and  in  the  constitutional 
clause  which  is  really  the  basis  01  the  patent 
system. 

It  was  provided  in  the  Constitution  that  Con- 
gress should  have  the  power  "to  promote  the  pro- 
gress of  science  and  useful  arts,  by  securing  for 
limited  times  to  authors  and  inventors  the  exclusive 
right  to  their  respective  writings  and  discoveries." 
Under  this  provision  of  the  Constitution,  laws  were 
passed  providing  for  the  grant  of  patents.  The 


13 


foundation  upon  which  such  laws  are  built  in- 
volves the  idea  of  a  contract  between  the  inventor 
and  the  public.  In  exchange  for  a  full  and  com- 
plete disclosure  of  the  invention,  to  be  preserved 
in  the  public  records,  and  accessible  at  all  times  to 
the  public,  the  government  agreed  to  secure  to  the 
inventor  the  exclusive  right  to  his  invention  for  a 
term  of  years.  From  the  beginning,  the  language 
employed  in  the  patent  itself  followed  the  wording 
of  the  above  constitutional  clause.  Notice,  for  ex- 
ample, the  fac  simile  reproducted  on  page  15, 
signed  by  George  Washington  and  countersigned 
by  Thomas  Jefferson,  which  is  taken  from  what  is 
said  to  be  the  first  patent  ever  issued  by  the  United 
States.  It  was  granted  Jan.  31,  1791,  to  Francis 
Bailey,  of  Philadelphia,  and  related  (to  quote  the 
patent  itself)  to  certain  "Methods,  not  before 
known  or  used,  for  forming  punches,  by  which  to 
impress  on  the  Matrices  of  Printing  Types,  whether 
such  Types  be  for  Letters  or  Devices,  as  well  as 
to  impress  on  any  Metal  or  other  substance  capable 
of  receiving  and  retaining  impressions,  various 
Marks  which  are  difficult  to  be  counterfeited." 

The  grant  recites  that  "the  said  Invention  ap- 
pears to  be  useful  and  important,"  and  that  "in 
pursuance  of  the  Act  entitled  'An  Act  to  promote 
the  progress  of  useful  Arts,'  "  there  is  granted  "to 


li 


the  said  Francis  Bailey,  his  Heirs,  Administrators 
and  Assigns,  for  the  Term  of  fourteen  years,  the 
sole  and  exclusive  Right  and  Liberty  of  using  and 
vending  to  others  the  said  Improvement,  according 
to  the  true  Intent  and  Meaning  of  the  Act  afore- 
said." 

The  essential  features  of  the  grant  have  not 
really  been  changed  since  the  foundation  of  the 
patent  system  over  one  hundred  years  ago. 

On  another  page  will  be  found  reproduced  a 
fac  simile  copy  of  the  grant  of  a  patent  recently 
issued  to  Mr.  Edgar  W.  Summers,  of  Pittsburgh, 
Pa.,  on  a  Car  Truck.  Examination  of  the  terms 
of  this  modern  grant  will  show  that  it  does  not 
differ  materially  in  substance  from  the  early  one, 
except  perhaps  in  the  recital  of  the  several  steps 
taken  by  the  inventor  to  procure  the  patent.  It 
will  be  noticed  that  this  grant  also  purports  to 
convey  "the  exclusive  right  to  make,  use  and  vend 
said  invention  throughout  the  United  States  and 
the  territories  thereof." 

As  a  matter  of  fact,  neither  of  the  above  grants 
give  the  inventor  in  all  cases  the  right  to  make, 
sell,  or  use  his  own  invention,  but  only  the  right 
to  prohibit  or  prevent  others  from  making,  using 
or  selling  his  invention  for  a  definite  number  of 
years,  for  the  infringement  of  which  right  he  may, 


16 


J 

t  jaD.Ur 

I 


HA^IPMEMKNTKD  TO  THE  C<Omilltfc*Ml«»nw  «»F  l»««(«*«i« 

I  oil  THE  GRANT  OF    I.K'ITKIOi    INl'KX  I    KOR  AN  AIJ.KOKn/MKW  ANI>  I  HKI  I  I.  I.MIM1€>VI:MI  :.M    IX 


UESCRIPTIOK  OF  -WHICH  INVENTION  IS  CONTAINED  INTHE  SPECIFICATION  OF  WHICH 
<  <  >l-v  18  HEREUNTO  ANNEXED  AMD  MADE  A  l-Alfr  HKREOF.  AND  IIA  /.  COMPLIED  WITH 
•AHIOI-M  REOVIREMENTS  OF  I^VW  IN  fit  en  C.VMKH  MADE  AND  PROVIDED.  AND 


CH'll-'     I    l-i.\     HI    I      EXAMINATION    MADE    THE    SAID     (  -I.M  M  v.V  r    . '-*         AIVIUDOED 
Y   I   .N  I  I  I  l.i;i>    TO    A    I».VI  i:x  1-  UNDER  THE    \*XW. 

I  "it  t«».  lit     ARE   TO    OH  ANT   UNTO  THE    SAID 


o\v  THEREFORE  THESE 


i  in.    1 1  HM  OK  SEVENTEEN   YEARS  FROM  THE 

ONE    THOUSAND    NINE    HUNDRE 


•I  III     I  v<  I  t  Hl\  I     R1OHT  TO  MAKK.USE  AND  VKJID  THE   SAID  IN^'ENTION  THROUGHOUT 
I'MITKD  STATES  AND  THE  TERRITORIES  THKRKOF. 


17 


under  the  law,  recover  damages  or  profits  from  the 
infringer. 

That  by  the  grant  of  a  patent  the  government 
does  not  give  the  inventor  the  right  to  make,  sell 
or  use  his  invention,  is  evident  from  the  fact  that, 
prior  to  such  grant,  he  already  has  such  right,  pro- 
vided there  are  no  patents  to  earlier  inventors 
which  he  infringes ;  and  in  case  such  other  patents 
or  conflicting  rights  exist,  the  mere  issue  of  a 
patent  to  him  will  not  relieve  from  the  charge  of 
infringement  any  attempt  to  make,  use  or  sell  his 
patented  device,  whether  such  attempt  be  made  by 
him  or  anyone  else. 

It  is  'the  word  "exclusive"  that  really  gives 
character  to  the  grant — the  right  to  exclude  or 
prohibit  others  from  doing  something.  Whether  a 
patentee  has  the  right  to  operate  under  his  own 
patent  or  not,  is  entirely  dependent  upon  the  ex- 
istence or  non-existence  of  prior  claims  held  by 
others,  which  would  be  infringed  by  such  opera- 
tion ;  and  this  is  a  question  entirely  different  from 
the  question  as  to  whether  this  particular  patentee's 
rights  are  valid,  or  infringed  by  later  inventors. 

What  has  been  said  concerning  the  nature  of 
a  patent  grant  will,  perhaps,  help  to  explain  what 
so  many  have  difficulty  in  understanding,  i.  e., 
how  it  can  be  possible  for  more  than  one  to  hold 


18 


what  appears  to  be  a  valid  patent  upon  substantially 
the  same  thing.  As  a  matter  of  fact,  that  is  not 
possible;  it  is  only  an  appearance.  The  difficulty 
generally  arises  in  a  case  where  one  man  holds 
what  is  known  in  patent  law  as  a  broad  or  generic 
patent  upon  a  certain  invention  which  has  been  im- 
proved upon  by  others  in  various  ways,  the  others 
securing  patents  upon  their  several  improvements. 
Theman  who  h^lds-a^broad  or  generic  patent  Via^ 
a  right  to  prohibit  its  use  by  everyone  else,  SO 
long  as  his  grant  continues  alive;  but  he  has  not 
the  right  to  prevent  or  prohibit  others  from  ex- 
ercising their  inventive  faculty  in  the  development 
of  improvements  upon  his  invention,  nor  has  he 
the  right  to  prevent  or  interfere  with  others  secur- 
ing patents  upon  such  improvements.  That"  would 
not  ''promote"  the  progress  of  science  and  the  use- 
ful arts,  but  manifestly  "retard"  it.  As  has  been 
well  stated  by  the  U.  S.  Supreme  Court,  the  dis- 
closure of  a  broad,  generic  or  pioneer  invention  not 
only  does  not  stop  or  check  development  along  the 
same  line,  but  rather  serves  to  stimulate  it. 

To  illustrate  the  distinction  between  what  is 
known  as  a  generic  and  what  is  known  as  a  specific 
patent,  and  the  rights  of  the  parties  holding  the 
same,  let  us  take,  as  an  example,  the  case  of  a  car 
coupler.  Suppose  A  invents  an  improved  vertical 


19 


plane  coupler  or  draw-bar,  comprising,  essentially, 
three  parts,  a  head,  a  knuckle  and  a  locking  pin. 
Suppose  he  is  the  first  who  has  ever  employed  such 
three  parts  in  combination  in  a  coupler.  He  is  en- 
titled to  and  can  procure  a  patent  upon  the  com- 
bination between  a  head,  a  knuckle  and  a  locking 
pin,  his  claim  being  entitled  to  the  broadest  in- 
terpretation by  the  courts. 

Suppose  B  now  takes  a  coupler  made  in  ac- 
cordance with  A's  invention,  and,  in  using  the  same 
or  studying  upon  it,  works  out  a  different  form  or 
arrangement  of  the  locking  pin  or  knuckle.  B  is 
entitled  to  procure,  on  the  filing  of  proper  papers, 
a  patent  on  his  invention,  claiming  his  specific  or 
particular  improvement  on  A's  generic  invention. 
The  existence  of  A's  patent  has  not  had,  and  ob- 
viously should  not  have,  any  effect  at  all  in  prevent- 
ing B  from  securing  a  perfectly  valid  patent  on 
the  specific  improvement  which  he  has  invented; 
for  a  patent,  be  it  remembered,  does  not  necessarily 
insure  the  patentee  the  right  to  make  or  use  the 
invention,  but  primarily  the  right  to  prevent  others 
from  doing  so.  The  government  has  given  B  a 
patent  on  his  specific  improvement,  although  it  is 
to  be  remembered  that  there  has  been  a  prior 
generic  patent  issued  to  A,  broadly  covering  all 
couplers  employing  the  combination  of  a  head, 


20 


knuckle,  and  a  locking  pin.  B's  patent,  therefore, 
in  this  case,  does  not  give  him  the  right  to  make 
or  use  his  own  invention,  because  his  invention 
cannot  be  made  or  used  except  in  making  or  using 
the  invention  which  is  already  patented  by  A. 
Obviously,  if  this  were  not  so,  the  value  of  A's 
broad  patent  would  be  destroyed  as  soon  as  any- 
one patented  an  improvement  upon  it.  The  en- 
forcement of  such  a  rule  would  practically  upset 
the  whole  patent  system,  since  nearly  every  inven- 
tion is  or  may  be  broad  or  generic  to  others,  in  the 
same  line,  which  follow  after. 

What  the  government  does  give  to  B  is  simply 
the  right  to  prohibit  anyone  else  from  using  that 
which  he  originated,  or  his  particular  contribution 
to  the  art,  which  in  this  case  was  a  specific  improve- 
ment upon  the  locking  pin  or  knuckle  of  A's 
coupler.  A,  until  his  patent  expires,  can,  if  he 
chooses,  entirely  prevent  B  from  putting  his  inven- 
tion in  practice,  for  the  reason  that  B's  invention 
is  of  such  a  nature  that  it  cannot  be  used  except  in 
conjunction  with  the  invention  made  by  A.  In 
the  words  of  the  patent  practitioner,  it  is  but  one 
specific  form  of  a  generic  structure,  of  which  A 
holds  the  monopoly. 

On  the  other  hand,  while  A  is  entitled  to  pre- 
vent B,  as  well  as  everyone  else,  from  making  or 


21 


selling  any  couplers  embodying  the  broad  or  gen- 
eric invention  on  which  A  holds  a  patent,  B,  by 
virtue  of  his  patent  and  rights  thereunder,  can  en- 
tirely prevent  A  from  appropriating  or  making  any 
use  of  his  specific  or  improved  form  of  knuckle  or 
locking  pin.  If  A  wants  to  incorporate  B's  im- 
provement in  his  coupler,  he  must  get  the  consent 
of  B  by  license  or  purchase.  In  the  absence  of 
such  consent,  he  is  confined  to  the  use  of  his  generic 
form  of  coupler,  without  B's  improvement. 

The  above  illustration  may  serve  to  make 
plainer  the  peculiar  nature  of  a  patent  grant,  al- 
ready explained,  i.  e.,  that  it  is  not  a  grant  by  the 
government  of  the  right  to  make,  use  or  sell  a  man's 
invention,  but  merely  a  grant  of  the  right  to  pre- 
vent or  prohibit  others  from  making,  using  or 
selling  it  unless  they  pay  tribute  to  the  patentee. 
It  is  largely  because  of  this  distinction  that  it  is 
possible  for  so  many  perplexing  cases  to  arise  in 
which  it  appears  to  the  uninitiated  as  if  a  man, 
having  procured  a  patent,  has  in  some  way  been 
unjustly  treated,  because  he  finds,  when  he  at- 
tempts to  exploit  his  invention  in  practical  work, 
some  other  patent  previously  granted  stands  in  his 
way.  It  is  incumbent  upon  patentees,  as  well  as 
those  contemplating  purchases,  manufacture,  or 
other  dealing  involving  patent  rights,  to  find  out 


22 


just  what  relation  the  patent  in  controversy  bears 
to  others  in  the  art,  and  guide  their  actions  accord- 
ingly. The  mere  issue  by  the  government  of  a 
patent  to  an  inventor  shows  nothing  more  than  the 
prima  facie  ownership,  vested  in  the  grantee,  of  a 
right  to  prevent  others  from  making,  using,  or 
selling,  the  particular  invention  or  specific  improve- 
ment defined  in  the  claims,  and  indicates  nothing 
at  all  as  to  the  existence  or  non-existence  of  any 
prior  right  in  others  which  may  be  infringed  by 
commercial  working  under  the  patent.  That  can 
only  be  ascertained  by  personal  investigation  or 
search  by  an  attorney.  It  is  said  the  patent  shows 
only  prima  facie  ownership,  because  all  patents  are 
subject  to  be  defeated  in  case  proper  defense  can 
be  brought  against  them  in  the  courts. 


23 


CHAPTER  II. 


Patent  Office  Practice  Compared  with  Court 
Practice. 


In  patent  law  there  are,  in  general,  two  dif- 
ferent kinds  of  work,  the  first  treating  of  all  those 
steps  necessary  to  the  procuring  of  a  patent,  and 
the  second  treating  of  the  vicissitudes  encountered 
by  the  patent  after  it  is  issued. 

It  is  the  purpose  of  this  work  especially  to 
consider  the  first  of  the  above  branches  of  patent 
law.  A  complete  study  of  this  branch  should  in- 
clude not  only  a  careful  analysis  and  study  of  the 
United  States  Statutes  bearing  on  the  issue  of 
patents  and  of  the  Rules  of  Practice  of  the  United 
States  Patent  Office  published  from  time  to  time, 
but  it  should  also  include  a  study  and  considera- 
tion of,  first,  the  facilities  which  the  government 
has  provided  for  putting  into  effect  the  statutes 


25 


passed  by  Congress  with  relation  to  the  subject  of 
patents,  and,  second,  the  peculiarities,  or,  if  they 
may  be  so  called,  eccentricities,  that  have  become 
inseparably  associated  with  this  kind  of  legal  work, 
under  the  last  mentioned  division  being  included  a 
detailed  consideration  of  the  character  and  reason 
for  the  actions  taken  by  the  Examining  Corps  and 
other  officials  in  the  Patent  Office,  and  of  the  nature 
and  legal  effect  of  amendments  inserted  by  the  ap- 
plicant. There  has  been  a  disposition  manifested 
on  the  part  of  some  practitioners,  well  skilled  in 
patent  law,  to  regard  this  branch  of  the  patent  law 
with  something  of  contempt,  or  at  least  aversion, 
and  this,  it  is  submitted,  is  not  justified  by  the 
character  of  the  work  which  requires  skill  of  the 
highest  order,  legal  and  literary,  as  well  as  me- 
chanical. 

To  get  a  good  patent  on  an  invention  is  a  work 
of  great  importance,  and  in  some  cases  also  of 
great  difficulty.  The  United  States  Supreme  Court 
has  apparently  held  in  effect  that  "invention"  can- 
not be  defined,  but  has  to  be  determined  by  nega- 
tive tests,  that  is,  by  a  kind  of  process  of  exclusion, 
and  yet,  in  spite  of  this,  the  attorney  who  prepares 
and  prosecutes  the  application  for  a  patent 
shoulders  the  burden  of  disclosing  the  invention  so 
that  it  may  be  used  by  others  skilled  in  the  art, 


26 


while  at  the  same  time  covering  or  protecting  the 
rights  of  the  inventor  by  well  defined  claims. 

It  is  the  writer's  observation  that  the  patents 
which  have  been  allowed  by  the  Patent  Office  and 
passed  to  issue  only  after  the  most  protracted  con- 
test between  the  attorney  and  the  Patent  Office 
are  in  many  cases  very  much  better  for  having 
gone  through  what  we  may  not  inappropriately  call 
this  clarifying  or  rectifying  process.  This  empha- 
sizes the  importance  of  a  thorough,  or  better,  an 
exhaustive,  study  of  the  invention  and  the  salient 
features  thereof  prior  to  the  preparation  of  the  ap- 
plication, and  also  emphasizes  the  importance  and 
value  of  this  work. 

In  the  work  of  patent  soliciting  there  is  some- 
thing (not  present  in  work  connected  with  patent 
litigation),  which  is  somewhat  akin  to  the  creative 
work  required  of  the  inventive  genius  himself.  The 
inventor,  it  is  true,  makes  the  invention,  as  a  ma- 
chine, if  it  be  a  machine,  or  an  art,  if  it  be  an  art, 
but  it  is  the  attorney  who  prepares  and  prosecutes 
the  application,  who  must  put  that  invention  into 
words,  who  must  separate  all  those  things  which 
are  novel  from  the  prior  art,  and  who  must,  making 
due  allowance  for  everything  that  is  old,  so  define 
and  describe  all  those  things  which  are  new  as  to 
clearly  differentiate  between  them  and  lay  bare  be- 


27 


fore  others  skilled  in  the  same  art  all  of  the  elements 
that  characterize  the  invention  and  the  mode  of 
carrying  it  out,  and  at  the  same  time,  in  proper 
language,  hedge  about  the  rights  of  the  inventor 
in  such  a  manner  that  trespassers  can  be  kept  off. 


28 


CHAPTER  III. 


Relations  Between  an  Inventor  and  his  Attorney. 


The  first  interview  between  an  inventor  and  his 
attorney  is  something  of  considerable  interest. 
Many  inventors  inquire  at  the  outset  as  to  the  ad- 
visability of  taking  out  a  caveat  on  their  invention. 
It  is  astonishing  how  persistent  the  idea  is 
that  the  first  thing  to  do  with  an  invention  is  to 
file  a  caveat  on  the  same,  although  no  one  having 
this  idea  seems  to  know  why,  or  to  understand 
clearly  just  what  a  caveat  is. 

The  attorney  then  rehearses  the  story  which 
he  has  told  on  many  prior  occasions,  explaining 
why  a  caveat  under  our  present  law  is  not  a  good 
investment,  and  that  it  is  better  to  prepare  and  file 
a  complete  application,  first  making  a  search,  if  that 
seems  desirable,  in  order  to  determine  the  exact 
status  of  the  invention  with  reference  to  the  prior 


29 


art.  In  most  cases  it  is  advisable  to  make  a  pre- 
liminary examination  before  preparing  an  applica- 
tion for  patent.  It  is  not,  in  many  cases,  so  much 
because  there  is  a  liability  or  a  probability  that 
some  anticipating  patent  will  be  found,  as  in  order 
to  find  how  near  to  the  invention  the  devices  dis- 
closed in  the  prior  art  may  be.  A  knowledge  of 
the  art  is  very  useful,  and  in  most  cases  necessary, 
to  enable  the  attorney  to  prepare  the  proper  kind 
of  an  application. 

The  proper  course  of  procedure  having  been 
thus  explained,  a  suggestion  as  to  terms  now  fol- 
lows. Here  is  where  both  attorney  and  client  com- 
monly make  one  of  the  greatest  mistakes  made  in 
the  practice.  It  is  usual  for  a  patent  solicitor  to 
charge  a  fixed  fee  for  the  combined  work  of  pre- 
paring the  papers  for  an  application,  and  for  prose- 
cuting the  same  until  notice  of  final  allowance, 
provided  no  appeals  or  other  special  proceedings  of 
like  kind  arise.  This  is  unfair,  both  to  the  attorney 
and  the  client.  It  is  possible  to  make  some  kind  of 
an  estimate,  when  the  inventor  discloses  the  de- 
vice, as  to  how  much  labor  will  be  required  to  pre- 
pare the  original  papers  for  an  application  on  the 
same,  but  it  is  obviously  a  physical  impossibility  to 
determine  in  advance,  how  much  work  or  worry 
will  be  necessary  to  secure  the  allowance  of  the  ap- 


30 


plication  after  it  has  been  once  filed  in  the  Patent 
Office.  The  latter  portion  of  the  labor,  termed  the 
work"  of  prosecution,  is  in  many  respects,  the  most 
important  part  in  the  entire  process  of  securing  the 
patent.  To  fix  a  price  in  advance  for  doing  this 
work,  is  exactly  as  though  one  were  to  say  to  an- 
other, "I  understand  you  have  some  labor  for  me 
to  perform,  and  I  know  that  it  is  in  the  line  of  my 
business,  but  I  have  no  conception  whatever  as  to 
how  much  time  it  will  take  to  do  it  properly,  or  as 
to  what  the  difficulties  encountered  in  connection 
with  it  may  be.  I  will  undertake  to  do  the  work 
for  you, however, for  a  certain  fixed  sum,  say  twenty- 
five  dollars  ($25.00),  and  will  ask  you  to  pay  the 
same  in  advance."  The  absurdity  of  such  a  proposi- 
tion is  apparent  on  its  face,  and  yet  that  is  practi- 
cally what  is  done  right  along  by  most  attorneys 
who  charge  a  fixed  fee  for  prosecuting  an  applica- 
tion for  patent.  The  writer's  experience  shows  that 
some  applications  are  pending  in  the  office  for 
years,  and  have  to  be  amended  and  rewritten,  and 
argued,  time  out  of  mind,  before  they  are  put  in 
satisfactory  shape  for  issue,  and  before  the  office 
objections  are  all  overcome,  while  other  applica- 
tions are  either  passed  to  the  issue  division  on  the 
first  action,  or  require  but  a  few  formal  corrections 
before  final  allowance.  In  the  work  of  prosecution  of 


31 


a  pending  case  in  the  office,  the  personal  character- 
istics of  the  examiner  immediately  in  charge  of  the 
case,  as  well  as  the  examiner  in  charge  of  the 
division  to  which  the  case  relates,  and  in  case  of 
appeal  or  interference  of  the  tribunals  having 
charge  of  the  proceedings,  all  enter  somewhat  into 
the  course  of  procedure.  The  nature  of  the  inven- 
tion, the  nature  of  the  references  discovered  as 
bearing  on  the  same,  the  nature  of  the  disclosures 
contained  in  the  application  papers,  and  the  various 
questions  of  law  and  practice  which  arise  in  con- 
nection with  the  application,  all  tend  to  increase 
the  uncertainty  relative  to  what  will  be  involved  on 
proper  prosecution  of  the  case. 

I  say  "proper"  prosecution  of  the  case,  because 
it  is  of  course  evident  that  there  is  an  improper 
method  of  prosecuting  the  case,  in  which  short-cuts 
may  be  taken,  whereby  many  of  the  difficulties  and 
delays  ordinarily  encountered,  may  be  avoided. 
The  result  of  the  plan  ordinarily  followed,  of  charg- 
ing a  fixed  fee  for  the  prosecution  of  a  case,  is 
either  that  the  attorney  does  a  great  deal  of  work 
for  which  he  is  not  paid  at  all,  or  that  the  case  is 
slighted,  and  the  patent  issues  with  some  defect, 
which  works  injustice  to  the  client.  The  profession 
should  strive  by  every  means  in  its  power  to  abolish 
this  unfair  and  ill  considered  practice.  The  writer's 


32 


experience  has  been  that  it  is  more  satisfactory  to 
the  client,  as  well  as  to  the  attorney,  to  take  work 
on  a  basis  which  insures  the  attorney  compensation 
for  the  work  which  he  does,  and  insures  the  client 
good  service  at  all  times.  By  making  the  initial 
charge  for  the  preparation  of  the  papers  for  filing 
a  little  lower  than  the  usual  amount  and  carefully 
keeping  track  of  the  time  afterwards  devoted  to  the 
work  of  amendments  and  arguments,  the  result  de- 
sired can  be  easily  secured,  and  the  effect  on  the 
quality  of  the  work  is  really  surprising. 

The  matter  of  fees  between  the  inventor  and 
attorney  having  been  satisfactorily  settled,  and  the 
attorney  having  thoroughly  mastered  the  principles 
and  details  of  the  improvement,  he  transmits  the 
same  to  his  correspondent  in  Washington,  together 
with  sketches  or  o.her  data,  and  receives  in  a  few 
days  or  a  week  at  most,  a  reply  detailing  the  report 
of  the  correspondent's  search,  accompanied  by 
copies  of  all  such  references  as  have  any  bearing 
upon  the  proposed  application. 

If  it  be  now  determined  from  an  examination 
of  the  patents  returned  from  Washington  with  the 
report,  that  the  improvement  is  a  patentable  one, 
and  that  u  ,s  possible  to  secure  claims  of  sufficient 
value  to  warrant  the  filing  of  an  application,  the 
client  is  advised  to  that  effect,  and  transmits  in- 


33 


structions  to  proceed  with  the  preparation  of  the 
application. 


34 


CHAPTER  IV. 


Preparation  of  the  Papers  for  an  Application  for 
a  Patent. 


The  first  thing  required  in  the  preparation  of 
papers  for  an  application  is  usually  the  making  of  a 
drawing,  and  as  to  this  the  main  point  to  be  kept 
in  mind  is  the  fact  that  it  is  much  better,  so  far  as 
securing  good  patent  protection  is  concerned,  to 
have  the  illustration  as  simple  as  possible,  and  to 
have  it  clearly  show  the  features  which  are  to  be 
covered  in  the  claims,  and  not  anything  else  which 
can  well  be  omitted  or  which  is  immaterial  to  the 
invention  on  which  protection  is  sought.  It  is  in 
many  instances  a  fact  that  a  single  clear  perspective 
view  illustrating  the  inventive  idea  is  of  more  value 
than  several  sheets  of  finely  executed  mechanical 
structures,  which,  although  they  may  be  accurate 
as  to  details,  may  not  clearly  set  before  the  eye  the 


35 


inventive  thought  which  the  patentee  seeks  to  pro- 
tect. 

Proper  drawings  having  been  prepared,  the  next 
thing  necessary  in  doing  this  work  is  for  the  at- 
torney to  make  himself  thoroughly  familiar  with 
the  invention,  and  to  make  a  careful  analysis  of  the 
same,  separating  out  from  the  mass  of  data  gen- 
erally supplied  by  the  inventor,  so  much  as  is 
thought  to  be  absolutely  essential,  as  contradis- 
tinguished from  that  part  which  is  descriptive 
merely  and  relates  more  to  the  particular  embodi- 
ment of  the  inventive  idea  shown  in  the  device 
submitted,  which  is  not  essential  to  the  invention 
itself. 

Of  course  different  attorneys  have  different 
methods  of  proceeding,  in  order  to  accomplish  this 
result,  and  it  is  quite  likely  that  there  are  features 
of  merit  about  a  number  of  the  methods  employed, 
but  the  writer  hereof  has  found  in  his  experience 
that  the  best  plan  to  pursue,  is  to  make  a  diagram- 
atic  representation  of  what  he  thinks  to  be  the 
broadest  allowable  claim,  putting  the  several  ele- 
ments intended  to  be  incorporated  in  such  claim  in 
tabulated  form  one  above  the  other,  and  placing 
opposite  each  of  the  same  divers  limitations  which 
can  be  introduced  in  claims  of  more  limited  scope, 
which  it  is  thought  advisable  to  file,  in  addition  to 
the  broader  claim  or  claims. 


36 


Here  it  may  be  well  to  say  a  word  as  to  mul- 
tiplicity of  claims.  It  is  not  considered  good  prac- 
tice to  file  cases  with  a  very  large  number  of  claims, 
particularly  if  the  claims  be  constructed  on  what  is 
known  as  the  permutation  principle,  or  as  the  writer 
has  heard  it  called  "the  House  that  Jack  Built" 
plan,  that  is,  by  the  employment  of  a  basic  com- 
bination, to  which  in  each  of  the  several  claims  in 
succession,  there  is  added  some  single  modification 
or  change  just  sufficient  to  differentiate  each  claim 
from  the  one  which  precedes  it,  but  not  really  suf- 
ficient to  introduce  any  more  novelty  into  the 
combination.  Careful  examination  of  the  reported 
cases  will  show  that  the  patents  which  have  re- 
ceived the  best  treatment  from  the  Courts  are  those 
which  have  but  few  claims,  and  those  expressed  in 
simple  straightforward  language.  In  most  of  the 
important  litigation  with  which  the  writer  is 
familiar,  the  fight  in  Court  has  generally  been 
centered  around  some  single  important  fundamental 
claim,  all  of  the  rest  being  entirely  subordinated  to 
this.  It  has  long  been  a  pet  theory  of  the  writer, 
that  great  improvement  in  the  practice  in  many  re- 
spects would  result  were  a  rule  to  be  adopted, 
limiting  each  patent  to  a  single  claim.  This  idea, 
it  is  true,  has  been  scoffed  at  by  many  prominent 
attorneys  in  the  profession,  to  whom  it  has  been 


37 


submitted,  but  it  is  still  thought  to  contain  consid- 
erable of  merit.  If  the  reader  will  examine  those 
cases  which  come  immediately  under  his  notice,  he 
will  find  a  great  many  in  which  the  essential  feature 
of  the  invention  can  be  expressed,  and  in  reality, 
well  protected  by  a  single  claim.  It  is  known  that 
in  order  to  stand  the  test  in  Court,  every  claim 
must  be  capable  of  standing  alone,  that  is,  it  must 
present  a  patentable  combination,  such  as  will  sup- 
port a  claim  of  validity,  and  in  fact  must  be  treated 
just  as  though  it  were  the  only  claim  in  the  patent. 
Of  course  the  adoption  of  such  a  rule  as  the  one 
just  proposed  would  largely  increase  the  number  of 
issued  patents,  since  it  is  common  practice  to  cover, 
in  a  number  of  different  claims  in  one  application, 
a  number  of  different  features,  as  they  are  called, 
of  invention.  It  is  thought  by  the  writer  that  the 
amount  of  material  to  be  looked  over  in  making  a 
search,  however,  would  not  be  materially  greater 
under  such  a  rule,  than  it  is  under  the  present  prac- 
tice, and  such  material  as  would  have  to  be  ex- 
amined would  certainly  be  in  much  better  shape 
for  making  accurate  examination. 

Thus,  were  the  single  claim  adopted,  it  would, 
in  the  first  place,  very  materially  reduce  the  number 
of  patents  in  which  more  than  a  single  sheet  of 
drawing  is  requisite.  Each  claim  would  be  more 


38 


carefully  constructed  by  the  solicitor,  and  it  is 
sincerely  believed  would  receive  more  careful  and 
liberal  treatment  by  the  Courts,  since  they  would 
be  loath  to  defeat  a  patent  on  such  slight  technical- 
ities, as  now  sometimes  suffice,  to  enable  an  in- 
fringer  to  evade  the  consequences  of  his  infringing 
act.  It  is  known  in  the  profession  that  the  practice 
of  the  Courts  in  some  of  the  foreign  countries,  is 
much  more  liberal  than  it  is  in  the  United  States. 
They  do  not  place  the  same  restriction  about  the 
protection  afforded  by  the  patent,  and  in  in- 
terpreting the  meaning  of  the  claim,  they  pay  more 
attention  to  the  disclosure  of  the  patent  as  a  whole, 
taking  into  consideration  both  the  specification  and 
the  drawings,  and  affording  a  more  liberal  applica- 
tion of  the  doctrine  of  equivalents.  This,  it  is 
thought,  is  as  it  should  be,  and  this,  it  is  sincerely 
believed,  would  soon  become  more  common  practice 
in  our  own  Courts,  were  the  patents  themselves 
simplified  in  the  manner  suggested.  Those  who 
have  had  much  experience  in  making  validity  and 
infringement  searches,  will  testify  as  to  the  great 
amount  of  labor  involved,  and  as  to  the  difficulty 
resultant  upon  the  granting  of  a  large  number  of 
claims  in  single  patents.  The  practice  in  use  makes 
it  necessary,  in  order  to  secure  reliable  results  in 
any  such  search,  to  review  every  claim  of  every 


39 


live  patent  in  all  analogous  classes,  at  least, 
antedating  the  invention  under  examination. 
Where  some  of  the  patents  to  be  examined 
have  from  75  to  100  or  more  claims,  it  is  evident 
that  this  becomes  a  very  troublesome  and  tedious 
task.  Those  who  have  had  experience  in  connection 
with  this  work,  will  also  recognize  the  fact  that  in 
patents  containing  such  a  large  number  of  claims, 
there  are  nearly  always  certain  claims  which  can  be 
classed  together  in  groups,  characterized  by  certain 
fundamental  combinations,  which,  as  a  general  rule 
ought  to  have  been  represented  in  the  issued  patents 
by  but  a  single  claim,  and  which,  if  tested  on  a  hard 
fight  in  Court,  would  be  found  to  contain,  as  to  each 
of  the  said  groups,  only  a  single  patentable  com- 
bination. If  some  of  the  claims  of  a  group  contain 
elements  essential  to  that  combination,  which  are 
not  contained  in  the  other  claims  of  that  group, 
the  claims  not  containing  such  elements  cannot  be 
sustained  unless  such  elements,  by  implication,  be 
read  into  them,  for  otherwise  they  do  not  express 
a  patentable  combination  under  the  law.  On  the 
other  hand,  if  certain  of  the  claims  contain  the 
fundamental  combination  with  elements  added 
which  are  not  essential,  they  really  add  nothing  to 
the  protection  afforded  by  the  fundamental  claim, 
since  the  minor  details  added  do  not  import  validity 


40 


into  the  combination  fundamentally  considered,  and 
a  single  claim  to  such  fundamental  combination, 
would  sufficiently  and  thoroughly  dominate  the  art. 
Perhaps  the  points  in  favor  of  the  single  claim 
theory,  can  be  best  summarized  in  a  statement  to 
the  effect  that  since  every  single  claim  of  every 
patent  must  define  a  patentable  combination,  or  in 
other  words,  a  patentable  invention  capable  of 
standing  all  the  tests  to  which  it  is  submitted  by 
the  Court,  including  the  tests  as  to  novelty,  utility, 
and  invention,  there  appears  to  be  no  good  reason 
why  each  claim  should  not  be  considered  as  an  in- 
vention separate  and  distinct  by  itself,  for  it  is  in 
fact  such,  and  there  appears  to  be  no  good  reason 
why  more  than  one  invention  should  be  patented 
in  a  single  patent.  It  has  been  urged  by  some  with 
whom  this  matter  has  been  discussed  by  the  writer, 
that  this  practice  would  require  a  large  duplication 
of  drawings  and  descriptive  matter,  but  this,  it  is 
thought,  is  not  the  case.  There  would  undoubtedly 
be  required  in  some  instances  a  duplication  of  the 
descriptive  matter  and  illustrations,  but  it  would 
not  be  necessary  to  go  to  anything  like  the  expense 
which  is  sometimes  claimed.  Take  for  example  a 
patent  on  an  engine  compressor;  patents  of  this 
kind  have  been  issued  with  claims  on  the  steam 
mechanism,  claims  on  the  compressor  valves,  and 


41 


still  other  claims  on  the  other  features  of  construc- 
tion, such  as  the  framing  or  cylinder  devices.  The 
correct  illustration  of  any  one  of  these  several 
features  does  not  properly  require  an  illustration 
of  the  entire  compressing  apparatus.  The  com- 
pressor valves  may  be  correctly  illustrated  by  them- 
selves, and  to  any  one  skilled  in  the  art  such  il- 
lustration is  perfectly  intelligible  without  any 
representation  of  the  other  parts  of  the  machine. 
The  steam  controlling  valves  are  capable  of  rep- 
resentation by  themselves,  so  as  to  be  clearly  in- 
telligible without  other  parts  having  to  be  shown 
at  all,  and  the  like  is  true  of  any  of  the  other  por- 
tions of  the  mechanism.  The  same  thing  will  be 
seen  on  a  moment's  reflection  to  be  true  of  any  other 
class  of  device,  a  printing  press,  an  elevator,  a 
steamboat,  an  improved  transmitting  gear  for  an 
automobile,  or  a  machine  for  threading  bolts,  or 
almost  any  other  machine  which  one  may  call  to 
mind. 

The  reason  why  it  is  assumed  by  some  that 
duplication  of  description  and  illustration  will  be 
required  to  a  large  extent  under  such  a  practice,  is, 
because  of  a  practice  very  prevalent  of  making 
claims  to  a  combination  larger  or  more  extensive 
than  the  invention  which  is  really  the  subject 
matter  of  the  novelty  of  the  patent.  For  example, 


42 


in  claiming  a  certain  improvement  in  an  igniting 
device  for  use  in  a  gasoline  or  oil  engine, 
the  claims  would,  by  some,  be  framed  to 
the  entire  engine,  as  "An  engine  comprising  the 
combination  of  a  cylinder,  a  piston,  and  other 
parts  of  the  mechanism,  with  igniting  points  con- 
structed in  a  certain  specific  manner,"  whereas 
this  claim  would  be  better  for  all  the  purposes  of 
the  patent,  were  it  drawn  as  a  claim  to  an  igniter 
characterized  by  certain  specific  features  of  con- 
struction, without  any  mention  of  the  engine,  or 
without  bringing  the  engine  or  any  of  the  other 
parts  of  the  engine  into  the  combination.  The  same 
thing  will  be  found  to  be  true  in  reference  to  patents 
issued  on  certain  features  of  car  construction.  Take, 
for  example,  the  standard  M.  C.  B.  car  coupler. 
Where  the  invention,  properly  considered,  relates 
only  to  a  specific  improvement  in  some  little  detail 
of  the  locking  mechanism  that  holds  the  knuckle  in 
place,  it  is  common  practice  with  some  attorneys 
to  make  the  claims  so  as  to  include  in  the  combina- 
tion, the  coupler-shank,  the  head,  and  the  knuckle 
itself.  The  result  of  this  practice  is  disastrous 
to  the  protection  sought  to  be  secured  to 
the  inventor,  because  the  application  of  the  in- 
vention itself,  in  exactly  the  same  form,  applied 
to  other  mechanisms,  not  including  all  of  the  other 


43 


elements  included  in  the  combination  claim  of  the 
patent,  leaves  the  inventor  patentee  without  re- 
course. 

Of  course  if  any  plan  were  to  be  adopted  re- 
quiring the  filing  of  a  separate  case  for  every  claim 
sought  to  be  secured,  the  cost  of  procuring  each 
individual  patent,  ought  to  be  materially  reduced, 
both  in  the  item  of  government  charges,  and  in  the 
item  of  attorneys'  fees.  The  work  of  preparing  and 
prosecuting  an  application  of  this  kind,  would  be 
materially  less  than  that  required  in  an  application 
involving  a  number  of  different  inventions,  and  the 
number  of  cases  filed,  being  necessarily  greater,  the 
revenue  to  the  government  would  be  materially  in- 
creased, and  thus  permit,  without  sacrifice,  a  ma- 
terial reduction  in  the  cost  of  each  case. 

To  return  now  to  the  subject  of  this  chapter, 
that  is,  the  preparation  of  papers  for  an  application, 
and  taking  up  the  same  where  it  was  left,  it  is 
evident  that  the  preparation  of  a  diagramatic  rep- 
resentation of  the  combination  sought  to  be  covered 
in  the  claims  will  be  of  great  assistance  to  the  at- 
torney in  dictating  the  specification  and  the  claims 
themselves.  It  is  neither"  necessary  nor  desirable 
to  illustrate  anything  on  the  drawings  not  essential 
to  a  clear  understanding  of  the  invention  defined  in 
the  combinations  claimed.  On  this  account,  it  is 


44 


well,  in  most  cases,  to  prepare  a  diagramatic  rep- 
resentation of  the  claims  sought  to  be  secured,  be- 
fore the  drawings  are  made,  and  to  use  such 
diagramatic  outline,  in  determining  the  arrange- 
ment and  extent  of  the  several  figures  to  be  shown. 
The  solicitor,  as  well  as  the  Patent  Office,  will  find 
the  work  greatly  facilitated,  if  the  drawing  is  so 
made  that  practically  the  entire  invention  covered 
in  the  application,  is  disclosed  on  some  one  single 
sheet,  other  figures  being  added  only  to  make  clear 
certain  points  of  detail.  This  practice  is  more 
readily  followed  where  the  application  is  limited  to 
a  single  or  at  all  events  to  a  small  number  of  claims. 

The  drawing  having  been  prepared,  the  so- 
licitor, with  the  drawing  and  diagramatic  repre- 
sentation of  the  claims  before  him,  can  now  begin 
the  dictation  of  the  specification.  The  Rules  of  the 
Patent  Office  define  with  considerable  precision 
what  shall  be  put  into  such  specification,  but  there 
are  some  things  not  covered  in  the  Rules,  which  are 
of  great  importance,  and  which  each  solicitor  here- 
tofore has  had  to  learn  for  himself,  in  many  cases 
from  bitter  experience. 

In  the  first  place  the  statement  of  the  object 
of  the  invention,  preceding  the  detailed  description 
of  the  several  figures,  ought  to  be  clear  and  com- 
plete. A  specification  prepared  with  a  full  discus- 


45 


sion  of  this  kind  in  the  opening  part,  is  much  more 
intelligible  to  a  Court,  than  one  which  begins  im- 
mediately by  a  statement  that  on  figure  1,  I  have 
shown  so  and  so  and  on  figure  2  I  have  shown  so 
and  so,  and  figure  3  is  a  detailed  section  taken  on 
the  line  3 — 3  of  figure  2,  etc. 

It  is  a  practice  of  some  attorneys,  and  some  of 
very  high  standing  in  the  profession,  to  introduce 
in  the  opening  part  of  a  specification  some  state- 
ment equivalent  to  a  statement  that  the  invention 
"consists  in"  certain  features.  Sometimes  it  is 
stated  as  follows : 

"My  invention  comprises  certain  essential  ele- 
ments, which  may  be  described  as  follows." 

The  writer  is  opposed  to  this  practice  for  the 
reason  that  the  Statute  requires  a  limitation  and 
definition  of  the  invention,  i.  e.,  what  are  the  es- 
sential elements  thereof,  or  in  other  words  what  the 
invention  "consists  in"  in  the  claim  which  comes  at 
the  end  of  the  specification,  and  an  introduction  of 
such  a  statement  in  the  opening  part  of  the  speci- 
fication is  substantially  the  same  as  a  re-statement 
of  the  claim,  and  is  liable  to  do  damage  to  the  pro- 
tection accorded  by  the  patent  by  introducing  some 
limitation,  not  really  essential  to  the  invention,  and 
not  actually  included  in  the  claim  as  finally  stated, 
but  which  by  interpretation  of  the  Courts,  in  view 


46 


of  the  opening  statement,  may  be  afterwards  read 
into  the  claims,  and  deprive  the  patentee  of  his 
proper  protection. 

While  it  is  thought  by  some  not  to  be  desirable 
to  introduce  any  statement  regarding  the  prior  art 
in  the  introductory  portion  of  a  specification,  the 
writer  has  found  in  his  experience,  that  in  many 
cases  it  is  difficult  to  make  the  invention  clear  with- 
out some  reference  to  the  bearing  it  has  upon  the 
prior  art  structures.  Matter  of  this  kind,  however, 
when  introduced,  should  be  stated  as  generally  as 
possible,  and  without  derogatory  remarks  concern- 
ing such  prior  art  structures,  save  in  so  far  as  such 
may  be  inferred  perhaps  from  the  statement  of  ad- 
vantages secured  by  the  improvement  forming  the 
subject-matter  of  the  application  in  course  of 
preparation.  The  theory  should  be,  not  that  prior 
patented  devices,  are  in  any  manner  defective,  but 
rather  that  the  subject-matter  of  the  present  ap- 
plication, is  an  improvement,  and  marks  an  advance 
whereby  the  art  is  carried  a  step  further,  and 
humanity  is  one  degree  better  off  than  it  was  be- 
fore. 

A  general  outline,  particularly  specifying  the 
object  or  beneficial  results  accomplished  by  the  im- 
provement, having  been  given,  the  next  thing  to  be 
inserted  is,  as  required  by  the  Rules,  a  statement  in 


detail  as  to  what  is  shown  in  the  several  figures 
illustrated  in  the  drawings.  As  a  general  rule,  the 
writer  has  found,  that  this  portion  of  the  specifica- 
tion is  of  comparatively  little  value,  in  determining 
the  subject-matter  of  the  patent.  It  is  at  the  same 
time  something  apparently  necessary  as  intro- 
ductory to  the  detailed  description  of  the  mechanism 
which  follows,  and  being  required  by  the  Rules, 
must  be  put  in,  and  should  be  phrased  in  the  most 
concise  and  clear  manner  possible. 

Following  the  detailed  statement  concerning 
the  several  figures  comes  now  a  description  par- 
ticularly relating  to  the  various  mechanisms  em- 
ployed, and  the  relation  between  the  same.  This 
portion  of  the  specification  is  not  intended  to  in- 
clude, strictly  speaking,  a  description  of  the  opera- 
tion of  the  machine,  but  what  may  more  properly 
be  defined  as  the  structure.  At  the  same  time  it 
will  be  found  as  a  general  rule,  that  this  portion  of 
the  specification  can  be  made  much  plainer,  and 
easier  to  read  and  interpret  by  the  Court,  if  a  state- 
ment as  to  the  object  of  the  several  parts  is  pre- 
faced to  the  statement  as  to  the  parts  themselves, 
and  the  reference  numerals  which  have  been  ap- 
plied to  them.  The  mechanism  if  it  be  complicated, 
and  involves  the  use  of  a  large  number  of  different 
pieces,  can  also  be  made  clearer,  if  a  brief  descrip- 


48 


tion  is  given  dividing  the  several  parts  of  the  ma- 
chine into  different  groups  of  elements,  with  the 
object  and  purposes  of  each  of  the  several  groups 
clearly  stated. 

The  point  referred  to  as  involving  a  difference 
between  a  statement  of  structure,  afterwards  fol- 
lowed by  a  statement  of  the  object  to  which  such 
structure  is  incorporated  in  the  machine,  and  a 
statement  of  the  object  prefaced  to  a  statement  as 
to  the  structure,  and  the  reference  numeral  applied 
thereto,  would  be  best  evident  perhaps  from  an  il- 
lustration, as  follows.  Suppose  the  descriptive 
matter  to  relate  to  a  press  feeding  machine.  If  the 
statement  of  the  specification  begins,  "the  part 
numbered  1  shows  a  cam,  the  part  2  is  a  lever 
actuated  by  said  cam,  and  the  part  3  a  rocking- 
shaft  actuated  by  said  lever,  all  of  said  parts  co- 
operating in  producing  a  movement  of  the  part  4, 
which  effects  a  feeding  of  the  paper  to  the  press," 
it  is  obvious  that  the  device  does  not  as  readily 
come  within  the  grasp  of  the  mind,  as  it  would  if 
the  statement  were  made  as  follows :  "For  the  pur- 
pose of  feeding  the  paper  to  the  press,  mechanism 
numbered  4  is  provided,  which  receives  a  re- 
ciprocating movement  through  the  instrumentality 
of  a  rocker-shaft  3,  which  is  rocked  by  a  lever  2, 
receiving  its  motion  from  a  cam  1,  which  is  revolved 


49 


by  the  driving  gear."  It  is  believed  that  a  careful 
study  of  the  illustration  above  given  will  show  that 
it  is  almost  always  desirable  to  make  a  statement  of 
the  functional  object  of  a  part,  before  identifying 
the  same  on  the  drawings  by  the  reference  numeral. 
This  turns  the  mind  in  the  direction  of  the  use  of 
the  thing,  and  prepares  it  to  receive  a  better  im- 
pression as  to  the  structure.  It  has  been  well  said 
that  "necessity  is  the  mother  of  invention,"  and 
there  is  no  doubt  that  the  reason  for  the  difference 
above  pointed  out,  is  to  be  found  in  this  statement. 
The  necessity,  or  use,  or  function  precedes,  and  the 
structure  or  invention  follows,  in  order  to  meet  the 
requirements  of  the  case.  Every  attorney  who  has 
had  much  occasion  to  examine  specifications  pre- 
pared by  others,  has  had  experience  showing  the 
force  of  these  statements.  He  has,  undoubtedly, 
many  times,  with  a  feeling  of  relief,  turned  from  a 
specification  prepared  along  the  first  mentioned 
lines,  to  one,  in  which  a  clear  statement  of  the 
functional  use  of  a  part  is  introduced  preliminary 
to  the  description  of  the  structure  of  such  part,  and 
the  reference  numerals  whereby  it  is  identified  on 
the  drawings. 

Having  completed  the  description  of  the  struc- 
ture of  the  device,  the  next  thing  in  order  is  a  dis- 
closure of  the  operation,  taking  it  by  steps  in  regular 


50 


series.  This  should  also  be  coupled  with  references 
to  the  advantages  secured  by  the  improved  and 
novel  operation,  and  by  a  statement  or  statements 
as  to  equivalency  of  other  parts  which  it  may  be 
thought  could  be  substituted  in  place  of  the  specific 
structures  shown,  although  the  last  mentioned 
matter  should  be  inserted  with  great  caution,  since 
these  questions  of  equivalency  are  really  for  the 
Court,  and  the  position  the  invention  occupies  with 
reference  to  the  prior  art,  should  really  be  the  factor 
which  determines  this  point.  Additional  reason  for 
caution  in  stating  anything  as  to  what  would  be  or 
would  not  be  equivalent,  is  found  in  the  fact  that  a 
mis-statement  on  this  point,  may  enable  an  in- 
fringer  to  show  anticipation  in  a  certain  prior  de- 
vice, which  is  not  in  reality  equivalent  to  the  device 
covered  by  the  patent. 

Having  completed  the  descriptive  matter  in  the 
specification  the  next  thing  in  order  is,  of  course, 
the  claim  or  claims.  Here  particular  use  should  be 
made  of  the  diagramatic  representation  prepared  in 
the  first  instance,  and  the  claims  dictated  there- 
from, carefully  avoiding  the  inclusion  in  any  one  of 
them  of  any  element  not  essential  to  the  combina- 
tion sought  to  be  expressed.  Probably  more  claims 
are  defeated  in  Court,  or  fail  to  sustain  the  rights 
of  the  inventor  to  what  he  has  really  invented,  be- 


51 


cause  of  the  inadvertent  inclusion  of  some  element 
or  elements  not  absolutely  essential  to  the  operative 
combination  of  the  real  invention,  than  from  any 
other  cause.  Great  care  ought  to  be  exercised  in 
every  case  to  secure  at  least  one  broad  fundamental 
claim  covering  the  most  important  feature,  as  it  is 
called,  of  the  improvement,  without  incorporating 
into  such  claim  anything  whatever  which  may  act 
as  a  limitation  or  restriction  of  the  patentee's  rights 
to  less  than  he  is  entitled  to  monopolize. 

A  patent  issued  on  such  a  claim,  is  a  good  and 
valuable  patent,  even  though  there  are  no  other 
claims  in  it  at  all ;  and  provided  the  subject-matter 
which  might  be  covered  by  other  claims,  be 
patented  independently,  it  is  thought  that  such  a 
patent  is  all  the  better  for  containing  but  one  claim, 
since  it  will  be  more  liable  to  receive  friendly  con- 
sideration by  the  Court,  and  will  give  less  oppor- 
tunity for  the  introduction  at  the  hearing,  and  in 
the  record,  of  extraneous,  or  confusing  matter, 
which  tends  to  cloud  the  real  issue  of  the  case. 

Where,  as  in  the  present  practice,  a  number 
of  so  called  different  "features"  are  to  be  covered 
in  the  same  case,  great  care  should  be  exercised  in 
formulating  the  claims  to  each  of  the  several  fea- 
tures, so  that  each  of  the  claims  shall  stand  like  the 
proverbial  tub  upon  its  own  bottom,  and  not  be 


52 


mixed  with  any  limitations,  properly  belonging  to 
any  of  the  other  features.  This  is  another  place 
where  many  attorneys  fail  to  secure  proper  pro- 
tection for  their  clients.  In  other  words,  each 
claim,  to  each  feature,  should  be  considered  as 
though  it  were  the  only  claim  in  the  patent,  and  it 
should  be  worded  in  such  a  way,  as  to  cover  just 
those  elements  which  are  absolutely  essential  to  an 
operative  device  embodying  such  particular  feature, 
and  not  anything  which  could  be  dispensed  with,  or 
for  which  other  things  not  equivalent  might  pos- 
sibly be  substituted. 

What  has  already  above  been  referred  to  as 
the  "permutation"  system  of  drawing  claims,  should 
be  carefully  avoided,  save  in  so  far  as  it  may  pos- 
sibly be  of  use  in  formulating  two  or  three  dif- 
ferent statements  of  what  is  practically  the  same 
invention.  The  last  mentioned  practice  under 
present  procedure  would  be  in  some  cases  admis- 
sable.  The  "House  that  Jack  Built"  method  of 
preparing  claims,  is  something  which,  in  the  ex- 
perience of  every  practitioner  in  the  profession, 
can  be  seen  to  have  been  productive  of  disastrous 
results.  A  claim  having  been  drawn  to  a  certain 
combination,  including,  for  example,  a  rotating 
carrier  for  some  purpose,  other  claims  are  con- 
structed on  that  combination,  by  a  copying  thereof 


53 


with  elements  added  thereto.  Now,  it  very  likely 
happens  that  in  the  particular  machine  referred  to 
the  "rotating  carrier"  of  the  combination  of  the 
first  claim,  may  be  necessary  to  that  particular  com- 
bination, or  feature,  but  may  not  be  necessary  at 
all  to  the  combination  or  feature  covered  or  sought 
to  be  covered  in  the  other  claims,  and  yet  if  the 
permutation  system  be  followed,  this  limitation 
will  be  found  in  every  one  of  the  claims,  and  en- 
able infringers  to  evade  all  of  the  other  claims  ex- 
cept the  first  one,  by  the  omission  of  the  rotating 
carrier,  or  the  substitution  of  something  in  place 
of  it  which  is  not  the  equivalent  thereof.  Thus,  all 
of  the  protection  afforded  by  the  patent  may  be 
entirely  nullified,  by  carelessness  in  this  respect. 
Every  attorney  who  makes  a  practice  of  looking 
over  patents  to  render  opinions  thereon,  has  found 
numerous  instances  no  doubt,  where  a  large  number 
of  claims  in  a  patent  have  all  been  disposed  of  by 
simply  running  down  the  column  and  finding  the 
same  limiting  elements  in  all  of  them,  as  were  in- 
troduced into  the  first  claim.  Whether  other  fea- 
tures of  the  combination  are  new  or  embodied  in 
defendant's  device  or  not,  if  all  of  the  claims  have 
a  single  limitation,  which  is  not  used  by  defendant, 
defendant  does  not  under  our  law  and  practice  in- 
fringe. 


54 


Another  point  which  should  be  carefully  kept 
in  mind  in  the  preparation  of  claims,  is  to  avoid 
limitations  such  as  occur  when  certain  parts  which 
co-operate  in  the  performance  of  some  operation, 
are  specified  by  their  particular  or  specific  names, 
rather  than  by  the  employment  of  some  broad 
generic  term  such  as  means,  mechanism,  or  devices. 
Thus,  for  example,  where  a  claim  relates  to  a  cer- 
tain valve  controlled  mechanism,  in  combination 
with  which  a  certain  apparatus  is  used  for  produc- 
ing a  reciprocating  motion,  it  would  be  fatal  to  the 
value  of  such  claim  as  protection  on  the  generic  in- 
vention, to  specify  the  particular  form  of  device 
employed  or  shown,  for  producing  such  reciprocat- 
ing motion,  as  for  example,  to  say,  "a  spring"  for 
producing  reciprocating  motion,  where  the  require- 
ment of  an  operative  combination  would  be  entirely 
met  by  stating  it  as,  "means  for  producing  a  re- 
ciprocating motion,"  which  might  be  a  spring,  and 
might  be  a  motor  acting  positively  by  means  of  a 
connecting  rod,  or  might  be  some  other  device 
known  to  the  mechanic  arts. 


55 


CHAPTER  V. 


First  Steps  on  the  Part  of  the  Patent  Office  with 
Reference  to  the  Application. 


The  application  on  receipt  by  the  Patent  Office 
is  assigned  to  the  division  to  which  it  most  properly 
relates,  and  is  placed  in  the  files  of  such  division, 
awaiting  action  by  the  examiner  in  its  turn,  for 
it  is  a  rule  of  the  Office  that  cases  must  be  taken  up 
in  their  turn,  and  unless  some  special  reason  is 
shown,  it  is  not  customary  for  the  examiner  to  act 
on  any  matter  out  of  its  turn. 

When  the  examiner  reaches  the  case,  which 
may  be  in  a  few  weeks  or  may  take  months,  he  re- 
views the  specification,  and  then  makes  an  ex- 
amination of  the  prior  art  which  is  classified  in  his 
files,  and  determines  as  to  the  patentability,  or  non- 
patentability  of  the  several  claims  submitted,  writ- 
ing the  attorney,  or  the  applicant  if  there  be  no 


57 


attorney  of  record,  as  to  his  action  upon  the  case, 
rejecting  those  claims  which  he  deems  anticipated, 
or  objectionable  for  some  other  reason,  and  allow- 
ing such  as  he  thinks  present  novel  and  patentable 
subject-matter.  If,  in  the  judgment  of  the  ex- 
aminer, division  should  be  made,  and  other  cases 
filed  on  certain  portions,  not  properly  related  to  the 
main  case,  or  not  properly  joined  together  with  the 
other  subject-matter  of  the  application,  the  first 
Office  action  makes  a  requirement  for  division,  and 
this  must  be  complied  with,  before  action  on  the 
merits  can  be  obtained. 

As  a  general  rule  it  is  now  that  the  hardest 
work  the  attorney  has  to  do  in  connection  with  the 
application,  begins.  The  examiner  on  reading  the 
papers,  is  liable  to  take  a  very  different  view  of 
the  invention  from  that  taken  by  the  attorney  in 
preparing  the  papers.  He  is  also  liable  to  find 
references,  not  before  called  to  the  attention  of  the 
attorney,  but  having  a  material  bearing  upon  the 
scope  or  validity  of  the  claims  submitted.  There 
are  comparatively  very  few  cases  which  go  through 
the  Office  without  more  or  less  controversy  between 
the  examiner  and  the  attorney,  and  it  may  be 
fairly  said  that  as  a  general  rule,  a  case  is  the 
better  off,  which  has  been  fairly  thrashed  over  in 
the  Office,  provided  only,  that  the  attorney  has 


58 


studied  and  thoroughly  mastered  the  subject-matter 
of  the  invention,  and  has  persistently  held  out,  in 
favor  of  proper  claims  thereon,  until  he  has  con- 
vinced the  examiner,  or  if  the  examiner  be  ob- 
durate, some  appellate  tribunal  of  the  Office,  of  the 
justice  of  his  case. 

While  it  is  but  natural  that  among  such  a 
large  number  of  government  employees,  as  are  en- 
gaged in  work  in  the  examining  corps  of  the  Patent 
Office,  there  should  be  some  who  are  obtuse,  some 
who  seem  to  be  vindictive,  and  some  who  may  even 
be  subject  to  suspicion  or  open  to  criticism  on  other 
grounds,  still  in  the  writer's  experience,  it  is  to  be 
said,  in  all  fairness,  that  there  are  a  very  large 
number,  of  very  patient,  intelligent,  and  well 
educated  men  engaged  in  this  work,  probably  rating 
higher  in  competency  and  expert  knowledge  than 
any  other  comparable  body  known,  and  taking  the 
average  of  the  divisions  all  the  way  through,  the 
work  of  the  attorney,  if  it  be  conducted  upon  a  basis 
of  friendly  and  fair  dealing,  will  be  met  more  than 
half  way  by  the  Office,  and  the  relations  between 
the  Office  and  the  attorney  will  be  both  pleasant 
and  profitable.  The  writer  is  indebted  to  the  ex- 
aminers in  the  Patent  Office,  for  assistance  in  many 
cases  prosecuted  by  him,  in  the  way  of  suggestions, 
and  citations  of  important  references,  without  a 


59 


knowledge  of  which  the  patent  could  not  have 
been  put  in  proper  condition. 

While  it  must  be  admitted  that  in  some  di- 
visions of  the  Office,  the  unjust  principle  is  ap- 
parently followed,  which  regards  the  applicant  for 
patent  as  a  public  enemy  and  the  examiner  as  a 
defender  of  the  public  rights,  still  it  is  thought  that 
this  criticism  is  not  to  be  fairly  made  against  a 
large  number  of  the  divisions,  and  it  is  suggested 
that  indiscriminate  condemnation,  sometimes  in- 
dulged by  attorneys,  is  not  productive  of  beneficial 
results.  In  some  respects,  it  is  really  subject  for 
wonder  that  in  a  place,  controlled,  so  far  as  the 
chief  positions  are  concerned,  so  much  by  political 
influence,  there  should  yet  be  so  much  of  fairness, 
intelligence  and  courteous  treatment. 

In  this  connection  it  is  submitted  that  the 
proper  attitude  of  the  Office  with  reference  to  all 
pending  cases,  should,  in  all  fairness,  be  one  of 
affirmation,  and  friendliness,  and  not  of  antagonism, 
and  opposition.  The  patent  system  was  devised, 
and  is  maintained,  not  because  it  is  a  benefit  to  the 
inventor,  but  because  it  is  assumed  to  "promote  the 
progress  of  science  and  the  useful  arts,"  as  it  is 
stated  in  the  Federal  Constitution.  Such  being  the 
case,  it  is  to  the  benefit  of  the  public,  that  a  just 
patent  should  be  issued.  It  is  but  a  logical  con- 


60 


elusion,  that  every  time  a  just  claim  is  rejected, 
or  a  meritorious  invention  so  thinned  down  in  the 
application  as  to  deprive  the  inventor  of  the  proper 
protection,  the  public  is  thereby  injured,  as  well 
as  the  inventor.  On  the  other  hand,  if  an  invalid 
patent  be  issued,  the  harm  done  is  not  only  an  in- 
jury to  the  public  generally,  but  also  an  injury  to 
the  patentee.  The  grant  of  Letters  Patent,  is  sup- 
posed to  give  a  man  certain  prima  facie  rights, 
capable  of  being  sustained,  if  valid,  in  subsequent 
proceedings  in  Court,  but  if  such  supposed  rights 
do  not  possess  such  capability,  then  the  patentee, 
has  received  the  grant  to  his  detriment  and  will 
derive  therefrom  trouble  and  expense  and  ultimate- 
ly disappointment. 

It  is  the  Federal  Courts,  under  the  statutes, 
which  are  in  reality  the  guardians  of  the  rights, 
both  of  the  public,  and  of  the  patentee,  and  in  view 
of  the  fact  that  ample  provision  is  contained  in  the 
statutes  for  the  protection  of  such  several  rights 
by  the  Courts,  the  attitude  of  the  Patent  Office 
certainly  should  be  one  friendly  to  the  issue  of 
Letters  Patent,  especially  where  there  is  any  case 
of  doubt.  If  a  meritorious  invention  be  refused 
protection,  the  public,  as  stated,  has  been  damaged 
thereby,  and  the  damage  is  in  a  way  irreparable, 
whereas  if  a  patent  be  issued  which  is  not  valid, 


61 


the  public  may  be  protected  through   examination 
of  the  art,  and  by  the  Courts. 

Another  word  as  to  the  examiner,  from  one 
who  confessedly  looks  at  these  things  through  the 
eyes  of  the  attorney  and  his  client,  the  inventor, 
may  not  be  here  amiss.  It  seems  to  be  the  practice 
of  a  few  of  the  employees  of  the  examining  corps, 
on  taking  up  an  application  for  first  investigation, 
to  read  the  first  of  the  claims,  to  find  a  reference 
for  the  same,  if  one  is  thought  to  exist,  and  to  reject 
all  of  the  claims  on  that  reference,  ignoring  the  dif- 
ferences between  the  several  claims,  and  the  fact 
pointed  out  in  the  earlier  part  of  this  work,  that 
each  claim  must  be  practically  a  complete  operative 
and  patentable  combination  in  and  of  itself,  regard- 
less of  any  of  the  other  claims,  and  in  case  of  litiga- 
tion in  Court,  would  have  to  stand  or  fall  alone,  as 
though  there  were  no  other  claims  in  the  case.  Of 
course  the  volume  of  work  and  the  pressvire  to  bring 
it  up  to  date  are  to  be  pleaded  in  extenuation-  of 
this  practice,  but  so  long  as  the  present  practice  of 
issuing  a  large  number  of  claim's  in  a  single  case 
is  continued,  it  should  be  carefully  observed  by  the 
examiners  what  the  differences  are  between  the 
several  claims  submitted,  and  action  upon  them 
should  be  based  upon  the  merits  of  each  by  itself, 
and  not  upon  a  single  combination,  with  the  as- 


62 


sumption  that  the  others  are  in  essence  just  like 
it.  It  is  true  that  under  the  system  of  drawing 
claims  employed  by  many  attorneys,  a  certain 
fundamental  combination  will  be  put  into  a  large 
number  of  claims,  and  it  is  also  true  that  if  the 
fundamental  combination  be  anticipated  in  the  art, 
it  is  open  to  serious  question  whether  the  addition 
of  well  known  elements  to  such  combination,  im- 
port patentability  into  the  other  claims  based  on 
that  combination ;  and  in  such  cases  a  rejection  of 
all  containing  such  combination  may  well  be 
warranted,  but  the  experience  of  the  writer  is  that 
it  is  common  practice  with  some  examiners  to  re- 
ject a  whole  set  of  claims,  differing  radically  from 
each  other,  on  a  reference  which  meets  fairly  only 
one  of  them  and  that,  generally,  the  broadest  one. 

Another  objectionable  practice  followed  by 
some  examiners  is  that  of  rejecting  claims  upon 
patents  which  do  not  properly  or  fairly  antici- 
pate such  claims,  simply  for  the  reason  as  it  is 
given,  "of  getting  such  patents  into  the  record." 
It  is  evident  that  there  are  reasons  in  favor  of  mak- 
ing the  record  of  an  application  show  clearly  the 
state  of  the  prior  art,  and  the  writer  of  this  book 
has  no  objection  to  that,  and  believes  that  the  public 
good  would  be  largely  promoted  if  this  were  done 
to  a  greater  extent,  but  it  is  believed  it  should  be 


63 


done  in  a  different  way.  That  is  to  say,  the  re- 
jection of  claims  anticipated,  should  be  made  in  the 
first  instance,  and  then  whatever  other  references 
are  found,  which  are  thought  to  have  important 
bearing  upon  the  subject-matter  which  it  is  at- 
tempted to  cover  in  the  application,  can  be  cited 
in  a  supplemental  paragraph  or  statement,  such  as 
is  sometimes  put  in  by  some  of  the  examiners,  in 
language  something  like  this :  "In  amending  this 
application,  it  is  thought  that  attention  should  be 

directed  to  the  patents  to  Smith  No and  the 

patent  to  Green  No "     If  the  applicant  has  a 

really  meritorious  case,  and  if  his  claims  in  the  face 
of  the  art,  are  valid,  such  action  will  not  injure  his 
patent,  but  tend  rather  to  strengthen  the  same.  On 
the  other  hand,  if  the  prior  art  patents  referred  to 
in  such  supplemental  clause,  while  not  strictly  or 
correctly  anticipations  of  the  subject-matter  of  the 
claims  as  stated,  have  such  a  bearing  upon  the  sub- 
ject-matter of  the  invention  as  would  tend  to  im- 
pose restrictions  or  limitations  upon  the  patent  after 
issue,  or  would  be  of  service  to  the  public,  or  the 
judiciary,  in  interpreting,  or  defining  the  limit  of 
the  patent,  it  is  right  that  the  public  should  have 
the  benefit  of  the  examiner's  work  to  this  extent. 
The  writer  in  his  experience  has  encountered  a 
number  of  cases,  where  he  has  had  good  cause  to 


64 


be  very  grateful  for  a  citation  of  this  kind  to  the 
prior  art,  and  has  been  enabled  by  reference  to  the 
patent  mentioned  by  the  examiner,  to  materially 
strengthen  his  patent.  He  has  also  had  occasion 
to  take  advantage  of  such  references,  by  the  ex- 
aminer, to  get  a  better  insight  into  the  questions  of 
infringement,  which  must  be  considered  by  all  who 
purpose  the  commercial  working  of  their  inven- 
tions ;  and  in  some  instances  to  get  control  of 
Letters  Patent  essential  to  insure  him  a  clear  field. 


85 


CHAPTER  VI. 


Interview  Between  Attorney  and  Client  on  Receipt 

of  Office  Action,   and  Preparation  of 

Amendment  and  Argument. 


The  writer  has  always  made  it  a  practice,  and 
his  experience  confirms  his  theory  that  the  practice 
is  a  good  one,  to  consult  with  the  inventor  or  ap-. 
plicant  before  preparing  an  amendment  or  reply  to 
the  office  action.  This  appears  to  be  neglected  by 
many  attorneys,  probably  with  the  idea  that  the 
work  of  amendment  and  argument  is  strictly  the 
attorney's  work,  and  that  the  inventor,  without 
knowledge  of  the  patent  law,  can  be  of  no  material 
assistance,  but  the  writer  has  found  that  the  dis- 
cussion of  an  office  action,  and  the  examination  of 
the  references,  in  connection  with  the  applicant  in- 
ventor is  of  material  assistance  in  the  preparation 
of  the  amendatory  action  or  reply  argument  and 


often  enables  him  to  get  a  much  clearer  insight 
himself  into  the  real  gist  of  the  invention. 

An  action  upon  a  case  having  been  received, 
the  first  thing  to  do,  of  course,  is  to  get  copies  of 
the  references  cited  by  the  examiner,  and  this 
having  been  done,  a  notice  should  be  sent  to  the 
applicant  to  come  in  and  go  over  the  matter  with 
the  attorney,  preparatory  to  the  work  of  amending. 
Before  taking  up  the  question  with  the  applicant, 
however,  it  is  well  for  the  attorney  to  make  a  care- 
ful study  of  the  references,  and  find  out  for  himself 
just  what  bearing  they  have,  if  any,  upon  the  re- 
jected, or  objectionable  claims. 

The  applicant  having  put  in  an  appearance  in 
response  to  the  summons,  the  several  claims  acted 
upon  by  the  office  can  be  gone  over  in  detail,  and 
the  action  of  the  office,  and  the  bearing  of  the 
references,  as  the  attorney  sees  it,  can  be  explained 
to  the  applicant,  who  then  in  turn,  can,  and  fre- 
quently does,  make  suggestions,  as  to  points  of 
difference  or  resemblance,  which  are  of  material 
aid. 

In  the  course  'of  such  an  interview  it  will  be 
found  of  material  assistance  if  the  attorney  makes 
a  practice  of  taking  note  of  such  points  as  occur 
to  him,  either  by  himself,  or  from  suggestions 
thrown  out  by  the  inventor,  such  notes  to  be  used 


68 


in  the  preparation  of  the  amendment.  The  amend- 
ment should  be  prepared  as  soon  as  possible  after 
such  interview,  while  the  subject-matter  is  fresh  in 
mind,  and  a  practice  of  doing  this  regularly  will 
save  attorneys  much  unnecessary  labor,  and  besides, 
result  very  advantageously  to  the  procuring  of  a 
valid  and  properly  worded  patent. 

The  first  thing  in  the  preparation  of  an  amend- 
ment is  to  meet  the  action  of  the  examiner  in  order 
to  do  which,  it  is  often,  I  think  I  may  say  generally, 
necessary  to  read  not  only  the  letter  which  the  ex- 
aminer has  written,  but  also  the  subject-matter  con- 
tained between  the  lines  thereof.  This  will  be 
understood  by  most  attorneys  who  have  had  much 
dealing  with  the  Patent  Office,  for  it  is  a  known 
fact  amongst  them  that  in  acting  on  cases,  the  ex- 
aminers, as  a  rule,  do  not  fully  or  completely  state 
the  ground  for  their  action,  leaving  considerable  to 
be  inferred,  or  deduced,  from  the  subject-matter  of 
the  statements  made.  There  is  probably  no  at- 
torney in  the  practice,  who  has  not  found,  on  an 
interview,  that  the  examiner  and  the  attorney  have 
been  working  entirely  at  cross  purposes,  neither 
understanding  the  attitude  of  the  other,  and  a  five- 
minute  talk  will  sometimes  be  sufficient  to 
straighten  out  a  case  that  has  been  a  source  of  con- 
siderable annoyance  and  delay. 


69 


The  first  thing  requiring  attention  in  the  prep- 
aration of  an  amendment,  is,  of  course,  the  matters 
of  form  upon  which  objection  has  been  raised 
by  the  office.  These,  as  a  rule,  are  not  difficult  to 
dispose  of,  and  it  is  generally  advisable,  and  proper, 
to  meet  the  Office  so  far  as  possible  upon  technical 
requirements,  and  not  waste  time  and  energy  in  dis- 
cussion as  to  nonessential  points.  Even  assuming 
that  the  attorney  does  not  agree  with  the  Office, 
on  the  position  taken,  unless  there  is  some  good 
reason  for  starting  a  controversy,  it  is  obviously 
better,  to  follow  the  requirements  of  the  examiner, 
since  thereby,  if  nothing  else  is  accomplished,  at 
least  the  work  will  be  facilitated,  and  a  more  uni- 
form practice  established  in  the  patent  office. 

In  determining  action  upon  the  merits  or  es- 
sential parts  of  the  case,  great  care  should  be  ex- 
ercised, and  as  bearing  upon  the  statement  already 
made,  of  the  importance  of  finding  out  just  what 
the  attitude  taken  by  the  examiner  is,  it  is  to  be 
observed  that  this  can  be  frequently  ascertained, 
by  careful  comparison  of  those  claims  which  are  re- 
jected, with  those,  of  which  there  are  generally 
some,  which  have  been  allowed,  noting  carefully 
the  distinction  between  the  two.  The  reason  for 
allowing  some  claims,  and  rejecting  others,  will 
generally  be  apparent  on  a  careful  comparison  of 
each  of  the  separate  claims  with  the  references. 


70 


Here  great  care  should  be  exercised  not  to  be 
misled  into  inserting  into  the  rejected  claims  the 
limitations,  characterizing  the  claims  which  have 
been  allowed,  for  this  would  lead  to  duplication  of 
claims,  or  to  undue  restriction  of  the  patent,  be- 
cause of  which  the  inventor  would  not  procure  a 
proper  measure  of  protection.  The  suggestion  as 
to  comparison  between  the  two  classes  of  claims, 
is  made  only  for  the  sake  of  finding  out  the  attitude 
taken  by  the  examiner,  and  knowing  such  attitude, 
of  meeting  the  same  by  proper  amendment  and 
argument. 

Where  a  claim  is  fairly  and  clearly  met  by  a 
reference  it  is  almost  always  the  best  practice  to 
strike  it  out,  not  undertaking  to  get  something  al- 
lowed, which,  it  is  evident,  could  not  be  sustained 
after  it  had  been  passed  to  issue.  Of  course  trie 
insertion  of  some  amendment  may  enable  the  ap- 
plicant to  avoid  the  references,  and  this  is  often  the 
shortest  and  easiest  way  to  meet  the  difficulty,  but 
in  making  such  amendment  or  addition  to  the 
claim,  great  care  should  be  exercised,  as  has  been 
urged  all  along,  not  to  put  into  all  of  the  claims 
such  limitations  as  will  unduly  restrict  the  patent. 
The  same  observation  holds  good  here  as  was  made 
in  connection  with  the  preparation  of  claims,  name- 


ly  that  the  permutation  system,  should  not  be 
followed,  that  is,  that  each  claim  should  stand  by 
itself  as  though  it  were  the  only  claim  in  the  patent, 
and  no  limitation  should  be  put  in  all  of  them, 
which  is  common  to  them  all,  if  it  can  be  avoided, 
since  a  better  patent  will  be  procured,  where  each 
claim  depends  for  its  differentiation  from  the  prior 
art,  upon  some  distinction  peculiar  to  itself,  and  not 
present  in  the  other  claims. 

In  formulating  amendments,  great  care  should 
also  be  exercised  not  to  strike  out  claims  too  hastily, 
and  not  to  take  too  hasty  an  action  in  acquiescing 
in  any  respect  in  the  action  of  the  examiner,  un- 
less it  is  seen  to  be  a  proper  and  tenable  one.  Often 
times  a  little  argument,  and  a  careful  showing  of 
certain  points,  which  the  examiner  has  not  grasped, 
will  enable  the  applicant  to  remove  the  reference, 
without  any  amendment  of  the  claim  at  all.  In 
other  cases,  a  proper  amendment  to  the  specifica- 
tion, will  often  times  overcome  the  difficulty,  with- 
out requiring  a  change  in  the  claims,  and  this  is 
preferable,  if  it  can  be  accomplished,  since  the 
changes  made  in  the  claims,  are  frequently  made 
the  subject-matter  of  unfavorable  decisions  by  the 
Court  in  after  litigation. 

It  is  to  be  observed  that  claims  are  often 
anticipated  in  terms,  but  not  really  in  substance, 


72 


and  the  amendment  to  the  claims  should,  if  pos- 
sible, be  in  the  line,  of  substituting  different  termi- 
nology, which  cannot  be  by  any  possibility  the 
cause  of  confusion  or  misunderstanding  in  after  in- 
terpretation of  the  patent.  Sometimes  when  no 
suitable  word  can  be  found  to  substitute  for  that 
one  which  appears  to  be  anticipated  by  the  refer- 
ence, proper  amendment  of  the  specification,  setting 
out  clearly  just  what  the  meaning  of  the  term  in 
the  particular  pending  case  is,  will  remove  the  ob- 
jection. 

In  concluding  this  chapter  it  is  to  be  said,  that 
it  is  a  practice  on  the  part  of  many  attorneys  to 
slight  the  argument,  which  should  accompany  an 
amendment,  or  a  request  for  reconsideration.  The 
practice  is  one  which  cannot  be  too  strongly  con- 
demned, since  the  Office  is  entitled  to  a  clear  and 
full  statement  of  the  position  of  the  applicant,  and 
on  the  part  of  the  applicant,  much  better  results 
can  be  expected  on  the  whole,  from  proper  and  full 
presentation  of  the  applicant's  position,  and  reason 
for  requesting  reconsideration,  or  favorable  con- 
sideration of  new  claims  submitted.  This  recom- 
mendation holds  good  whether  the  examiner  has 
properly  performed  his  duty  in  the  premises  in  this 
regard  or  not,  and  I  think  it  may  truthfully  be  said 
is  especially  to  be  observed  where  the  examiner  has 


73 


been  lax  in  explaining  his  position,  since  it  is 
evident  that  if  the  examiner  will  not  study  the  case 
out  for  himself,  or  enter  into  a  logical  discussion  of 
it,  it  must  be  clearly  and  fully  spread  out  before 
him,  if  he  is  to  be  persuaded  to  take  favorable  action 
on  the  case.  It  may  be,  and  in  many  cases  un- 
doubtedly is,  very  aggravating  to  have  to  do  this, 
but  it  is  something  which  should  be  done  out  of 
regard  for  the  interests  of  the  client,  and  should 
be  treated,  as  in  fact  should  all  other  points  of  this 
kind,  in  an  entirely  impersonal  way.  No  other 
policy  is  admissable  in  a  patent  attorney's  work, 
any  more  than  it  is  in  the  work  of  any  other  pro- 
fessional man. 


74 


CHAPTER  VII. 


Legal  Effect  of  Amendatory  Actions. 


In  preparing  amendments,  one  thing  which  it 
is  important  to  keep  in  mind  is  the  possible  after 
effect  in  a  legal  way  of  such  actions  as  may  be 
taken  in  the  nature  of  amendments.  There  is  a  dis- 
position on  the  part  of  some  Courts  to  pay  a  great 
deal  of  attention  to  the  file  history  of  an  application 
as  it  goes  through  the  Patent  Office,  and  there  is 
no  doubt  but  that  in  many  cases  proper  considera- 
tion should  be  given  to  the  position  taken  by  the 
applicant  in  overcoming  the  references  cited  by  the 
Office  and  securing  allowance  of  the  claims.  The 
fundamental  point  to  be'  borne  in  mind  in  this  re- 
gard is  that  no  action  should  be  taken  which  can 
be  properly  construed  afterwards  by  any  Court  as 
estopping  the  patentee  from  urging  such  interpreta- 
tion of  his  claims  as  will  be  co-extensive  with  his 


75 


invention.  Thus  for  example,  it  will  not  do  to  urge 
in  an  argument  contained  in  an  amendment  that 
certain  limitations  are  imposed  upon  the  claims 
with  a  view  of  avoiding  a  certain  prior  art  reference, 
and  then  expect  afterwards  to  persuade  some  Court 
to  sustain  the  claims  and  give  them  an  interpreta- 
tion excluding  such  limitation. 

One  good  rule  to  follow  in  connection  with  this 
matter  is  to  formulate  early  in  the  proceedings  a 
claim  worded  as  nearly  as  possible  to  define  exactly 
the  invention  which  it  is  sought  to  cover,  in  as 
broad  language 'as  possible,  and  then  to  try  and 
secure  allowance  of  such  claim  by  argument  and 
persistent  efforts  and  appeals  if  necessary,  rather 
than  by  insertion  of  limitations,  whether  such 
limitations  at  the  time  are  thought  to  be  material 
or  not  by  the  attorney.  It  is  bad  practice  to  take 
a  claim  which  is  felt  to  be  less  than  the  applicant 
is  really  entitled  to  receive,  by  way  of  compromise 
with  some  position  taken  by  the  examiner  which  is 
thought  not  to  be  correct. 

The  writer  has  had  personal  experience  in  a 
number  of  instances  where  an  examiner  has  been 
persuaded  to  withdraw  an  objection  or  a  certain 
requirement,  on  representations  as  to  the  legal  ef- 
fect of  compliance  with  such  requirement. 

It  is  often  the  case  that  cancellation  of  a  cer- 


76 


tain  claim  or  combination  in  an  application  acts  to 
work  an  estoppel  preventing  the  patentee  from 
afterward  urging  an  interpretation  of  claims  grant- 
ed co-extensive  with  the  claim  cancelled.  This  rule 
as  thus  broadly  stated  is  not  felt  to  be  correct,  how- 
ever, because  substantially  the  same  patentable 
combination  may  be  substituted  in  slightly  dif- 
ferent wording,  and  certainly  an  applicant  cannot 
justly  be  held  to  have  abandoned  his  right  to  any 
patentable  combination  stricken  out  of  the  applica- 
tion where  another  one  of  equivalent  scope  has  been 
substituted  in  its  place. 

Another  good  rule  to  keep  in  mind,  is  that  in 
making  amendments  it  is  desirable,  where  possible 
without  too  much  inconvenience,  to  retain  for  a 
given  claim  the  same  number  as  it  had  when  origi- 
nally filed,  whence  can  be  avoided  much  confusion 
and  misunderstanding  on  the  part  of  the  Court 
that  may  afterwards  be  called  upon  to  examine  the 
patent  and  file.  The  writer  had  occasion  recently 
to  examine  an  opinion  in  which  an  applicant  was 
held  to  have  been  estopped  from  urging  such  in- 
terpretation of  his  patent  as  was  embodied  in  a 
given  claim,  because  a  claim  to  such  combination 
had  been  at  one  stage  of  the  proceedings  taken  out 
— it  having  been  overlooked  that  in  an  amendment 
filed  at  the  same  time,  another  claim  with  a  dif- 


77 


ferent  number  had  been  inserted  along  with  the 
amendment  which  substitute  claim  was  word  for 
word  the  same  as  the  one  which  was  before  can- 
celed. 

It  is  obvious  that  if  cases  are  originally  filed 
with  a  very  small  number  of  claims — each  one 
standing  for  something  separate  and  distinct  from 
the  others,  there  will  be  much  less  amendatory 
work  ordinarily  required,  and  much  less  danger  of 
confusion  and  troublesome  legal  consequences  at- 
taching to  amendatory  actions  which  subsequent 
events  may  prove  were  not  wise. 

It  is  to  be  hoped  the  day  will  soon  come  when 
a  radical  change  will  be  made  in  the  Office  pro- 
cedure, which  will  throw  the  burden  with  reference 
to  amendatory  actions,  entirely  upon  the  applicant 
or 'his  attorney,  which  will  certainly  work  a  reform 
in  this  line  of  procedure.  In  a  paper  presented  be- 
fore the  patent  section  of  The  American  Bar  As- 
sociation at  the  meeting  in  1905,  by  His  Honor, 
Judge  Duell,  of  the  District  of  Columbia,  there  are 
a  number  of  recommendations  covering  certain  sug- 
gested improvements  in  the  practice,  and  amongst 
these  is  one  which  is  a  modification  of  the  present 
form  of  examination  or  procedure  which  contem- 
plates in  substance  that  there  should  be  a  thorough 
examination  on  the  filing  of  an  application,  and  then 


78 


one  amendment  by  the  applicant,  then  a  second 
action  by  the  Patent  Office  and  then  a  final  action 
by  the  applicant,  which  will  on  insistence  of  the 
applicant  put  the  case  to  issue,  or  from  which  an 
appeal  can  be  had  if  desired.  According  to  this 
recommendation 

"The  application  as  it  stands  after  the  applicant's 
second  reply,  should  then  pass  to  patent,  unless  the 
applicant  should  elect  to  take  a  prompt  appeal  to 
the  examiners-in-chief  in  order  to  have  a  ruling  by 
an  appellate  tribunal  on  the  points  of  difference  be- 
tween him  and  the  examiner.  The  applicant,  to  be 
permitted,  but  not  required,  to  modify  his  applica- 
tion to  meet  the  views  of  the  examiners-in-chief." 

As  clearly  pointed  out  by  Judge  Duell  in  the 
paper  in  question,  the  issued  patent  under  such  pro- 
cedure should  bear  on  its  face  sufficient  data  to 
give  to  the  public  the  substance  of  what  would  be 
disclosed  by  an  examination  of  the  file-wrapper, 
and  a  great  many  advantages  would  follow  the  in- 
auguration of  such  practice.  Concerning  this  the 
paper  says, 

"The  advantages  arising  from  such  an  examina- 
tion are  these:  The  examiners,  having  fewer  ex- 
aminations to  make,  could  give  more  time  to  them. 
One  thorough  examination  is  worth  half  a  dozen 
hastily  made  ones.  The  applicant  would  not  be 
forced  to  cancel  claims  which  he  believed  he  was 
entitled  to  as,  in  fact,  for  various  reasons,  he  often 


79 


now  is.  Patents  would  issue  at  an  earlier  day  as  a 
multiplicity  of  cross-actions  would  be  obviated  and 
the  number  of  appeals  brought  within  bounds.  The 
presumption  of  novelty  would  not  be  materially 
lessened,  and  the  later  validity  search  would  not  be 
more  laborious." 

The  writer  is  firmly  convinced  that  some  such 
change  in  practice  will  be  found  to  be  absolutely 
essential  before  a  great  while,  in  view  of  the 
great  increase  in  business  in  the  Patent  Office, 
and  the  enormous  increase  in  the  number  of  refer- 
ences, and  the  difficulty  of  properly  handling  the 
work  under  the  present  procedure.  If  to  a  new 
practice  along  the  lines  recommended,  were  added 
certain  restrictions  and  requirements — as  for  ex- 
ample, material  limitations  in  the  number  of  claims 
and  simplification  of  the  application  in  general, 
such  as  would  accompany  such  restriction  in  the 
claims,  and  strict  limitation  of  the  illustration  and 
descriptive  matter  to  such  matter  as  was  claimed, 
the  whole  patent  system  will  have  taken  a  very 
marked  step  in  advance. 


80 


CHAPTER  VIII. 


Amendments  Accompanied  by  Affidavits. 


It  is  to  be  observed  that  in  many  cases — 
especially  under  the  present  practice,  there  is  a 
legitimate  difference  of  opinion  between  the  appli- 
cant or  the  applicant's  attorney  and  the  examiner 
in  the  Patent  Office  with  reference  to  the  allow- 
ability  of  certain  claims  which  are  being  urged  in 
an  application,  and  one  method  of  overcoming  this 
difficulty  is  the  filing  of  affidavits  covering  the  points 
in  controversy.  It  will  be  found  in  many  cases  that 
differences  of  opinion  arise  as  to  matters  of  opera- 
tiveness,  or  as  to  practical  importance  of  certain 
features,  or  the  value  or  utility  of  certain  elements 
of  the  combination  urged,  and  in  all  such  cases  it 
will  be  found  that  much  value  attaches  to  the  use 
of  properly  framed  affidavits. 

Thus  for  example,  in  case  of  difference  of 
opinion  with  the  Patent  Office  as  to  the  operative- 


81 


ness  of  a  certain  combination,  (there  are  very  few 
divisions  in  which  the  objection  cannot  be  overcome 
by  filing  suitable  affidavits  based  upon  practical  test 
of  responsible  parties  who  swear  to  the  making  of 
such  test  and  to  the  successful  results  accomplished. 
Affidavits  of  people  skilled  in  the  art  or  experts  in 
certain  particular  lines  of  work  are  sometimes  of 
value  also  in  comparing  claims  urged  with  prior 
art  structures  shown  in  references  cited  against 
such  claims,  indicating  wherein  such  prior  art  struc- 
tures in  result  or  function,  or  operation  fall  short 
of  the  claimed  combination.  Affidavits  showing 
extensive  public  use  and  successful  introduction 
over  competing  devices  are  also  of  advantage  in 
some  instances,  and  in  fact  in  a  great  many  cases 
will  serve  to  turn  the  scale  in  the  favor  of  an  ap- 
plicant where  the  mind  of  the  examiner  is  in  doubt. 
It  is  scarcely  necessary  to  say  that  in  connection 
with  the  preparation  and  filing  of  such  affidavits 
great  care  should  be  exercised,  and  everything  ex- 
cept actual  consideration  of  facts  should  be  rigidly 
excluded. 

There  is  still  another  class  of  affidavits  filed 
in  connection  with  amendments,  in  the  prosecution 
of  applications  for  patent,  this  class  having  refer- 
ence to  Patent  Office  Rule  No.  75,  which  specifies 
that  where  a  case  is  rejected  on  reference,  and  the 


82 


applicant  shall  make  oath  to  "facts  showing  the 
completion  of  the  invention  in  this  country  before 
the  filing  of  the  application,"  on  which  the  refer- 
ence, if  it  be  a  U.  S.  patent,  issued,  or  before  the 
date  of  the  foreign  patent  if  the  reference  be 
foreign,  and  shall  also  make  oath  that  he  does  not 
know  and  does  not  believe  that  the  invention  has 
been  in  public  use  or  on  sale  in  this  country,  etc., 
then  such  reference  "will  not  bar  the  grant  of  a 
patent  to  the  applicant,"  unless  the  date  of  such 
patent  or  publication  is  more  than  two  years  prior 
to  the  date  on  which  the  application  was  filed  in 
this  country.  This  rule  permits  a  reference  to  be 
avoided  by  the  submission  of  the  oath  in  question, 
but  it  is  to  be  observed  that  the  oath  is  not  a  mere 
statement  by  the  applicant  that  he  conceived  or 
thought  of  the  invention  prior  to  the  date  in  con- 
troversy, but  a  statement  of  "facts"  showing  a 
completion  of  the  invention  in  this  country,  and  it 
must  be  accompanied  with  sketches  or  prints  to- 
gether with  other  data  showing  not  only  the  con- 
ception of  the  idea,  but  the  actual  completion  of  the 
invention  in  question,  and  such  showing  should  be 
clear  and  conclusive. 

Rule  76  also  is  of  similar  character,  and  in  case 
of  rejection  of  a  claim  on  certain  references  per- 
mits the  filing  of  an  affidavit,  or  "deposition"  sup- 


83 


porting  or  traversing  these  references  or  objections, 
which  affidavits  or  depositions  it  is  to  be  observed 
should  also  of  course  follow  the  lines  indicated  in 
connection  with  rule  75,  and  not  incorporate  a  mere 
statement  of  opinion  or  unsupported  allegation  of 
the  applicant  himself. 


84 


CHAPTER  IX. 


Interferences. 


In  the  rules  of  practice,  No.  93,  an  interference 
is  denned  as  follows: 

"An  interference  is  a  proceeding  instituted  for 
the  purpose  of  determining  the  question  of  priority 
of  invention  between  two  or  more  parties  claiming 
substantially  the  same  patentable  invention.  The 
fact  that  one  of  the  parties  has  already  obtained  a 
patent  will  not  prevent  an  interference,  for,  although 
the  Commissioner  has  no  power  to  cancel  a  patent, 
he  may  grant  another  patent  for  the  same  invention 
to  a  person  who  proves  to  be  the  prior  inventor." 

Early  in  the  history  of  the  Patent  Office  it  was 
found  that  provision  would  have  to  be  made  to  de- 
termine the  matter  of  priority  as  between  two  con- 
testing applicants  for  the  same  invention. 

"Interfering  applications"  as  they  have  been 
icalled,  seem  to  have  been  first  recognized  in  our 
law,  in  1793,  for  the  original  patent  act  which  was 


85 


dated  1790,  makes  no  mention  of  them,  while 
the  Act  of  1793,  section  9,  provided  "that  in  case 
of  interfering  applications,  the  same  shall  be  sub- 
mitted to  the  arbitration  of  three  persons,  one  of 
whom  shall  be  chosen  by  each  of  the  applicants,  and 
the  third  person  shall  be  appointed  by  the  Secretary 
of  State ;"  *  *  *  "and  the  decision  or  award 
of  such  arbitrators,  *  *  *  or  any  two  of 
them,  shall  be  final  as  far  as  respects  the  granting 
of  the  patent."  This  section  further  provided  that 
"if  either  of  the  applicants  shall  refuse  or  fail  to 
choose  an  arbitrator  the  patent  shall  issue  to  the 
opposite  party."  Furthermore  it  was  provided  that 
"where  there  shall  be  more  than  two  interfering  ap- 
plications, and  the  parties  applying  shall  not  all 
unite  in  appointing  three  arbitrators,  it  shall  be  in 
the  power  of  the  Secretary  of  State  to  appoint  three 
arbitrators  for  the  purpose." 

To  the  modern  practitioner  in  patent  law  the 
simplicity  of  the  above  provision  is  almost  startling. 
It  is  submitted,  however,  that  upon  careful  ex- 
amination it  will  be  found  to  have  in  it  many  ele- 
ments of  good  common  sense,  which  is  something 
that  certainly  cannot  truthfully  be  said  of  some  of 
the  provisions  of  the  law  and  practice  in  inter- 
ferences as  it  exists  to-day. 

The  Act  of  1836  created  a  regular  Board  of  Ex- 


86 


aminers  of  three  persons  appointed  by  the  Secretary 
of  State,  which  board  had  jurisdiction  of  appeals 
in  cases  of  rejected  applications  and  also  in  cases  of 
interfering  applications,  having  authority  to  reverse 
the  decision  of  the  Commissioner  of  Patents  in  such 
cases.  Section  16  of  this  same  Act  provided  that 
any  party  interested  who  felt  aggrieved  by  the  de- 
cision of  the  board  of  examiners  in  any  interference 
case,  as  also  in  any  case  of  rejected  applications, 
should  "have  remedy  by  bill  in  equity,"  which,  by 
the  provisions  of  another  section  of  the  same  Act 
had  to  be  filed  in  some  United  States  .Circuit  Court 
or  in  some  United  States  District  Court  having  Cir- 
cuit Court  jurisdiction." 

The  Act  of  1861  created  a  new  board  of  three 
Examiners-in-Chief  to  be  appointed  by  the  Presi- 
dent, and  this  board  was  given  jurisdiction  of  ap- 
peals from  the  examiners  in  interference  cases  as 
well  as  in  applications,  and  by  the  same  section  pro- 
vision was  made  for  appeal  from  their  decision  to 
the  Commissioner  of  Patents  in  person.  The  of- 
fice of  Examiner  of  Interferences  was  created 
by  the  Act  of  1870,  which  gave  such  examiner 
charge  of  interference  cases  and  provided  appeal 
from  his  decision  to  the  board  of  examiners-in- 
chief. 

The   consolidated  patent  Act  of  1870,  besides 


87 


creating  the  office  of  examiner  of  interferences 
heretofore  noted,  made  another  change  in  the  course 
of  practice  in  interference  cases,  by  excepting  such 
cases  from  those  appealable  to  the  Supreme  Court 
of  the  District  of  Columbia,  leaving  as  the  only 
remedy  in  case  of  rejection  by  the  Commissioner 
in  person,  the  filing  of  a  bill  in  equity  in  some 
United  States  Circuit  Court,  according  to  the  pro- 
visions contained  in  the  Patent  Act  of  1836.  By  an 
Act  dated  February,  1893,  the  Circuit  Court  of 
Appeals  of  the  District  of  Columbia  was  created, 
and  to  that  Court  was  given  jurisdiction  of  appeals 
from  the  Commissioner  of  Patents  in  interference 
cases  as  well  as  in  cases  of  rejected  applications, 
and  such  is  the  law  to-day. 

From  a  most  careful  examination  of  the  several 
patent  statutes  relating  to  appeals  and  proceedings 
in  interference  cases,  it  is  evident  that  it  was  never 
the  intention  of  Congress  to  build  up  any  such 
elaborate  and  complicated  system  of  procedure  as 
exists  to-day  by  virtue  of  the  growth  of  the  Patent 
Office  Rules  in  this  department.  The  simplicity  of 
the  early  provision  allowing  the  appointment  of 
the  three  arbitrators  and  making  their  decision 
final  is  in  striking  contrast  to  the  number  of  ap- 
peals at  present  allowed — as  many  as  five  being  in 
fact  possible,  if  the  Bill  in  Equity  be  included — and 


88 


also  the  large  number  of  interlocutory  motions  and 
petitions  of  one  kind  or  another  which  are  per- 
mitted under  the  rules  as  they  stand. 

As  the  matter  stands  to-day,  there'  is,  first,  the 
formal  declaration  of  interference.  Until  the 
declaration  the  primary  examiner  under  rule  100 
retains  jurisdiction  of  the  case.  Upon  the  declara- 
tion or  institution  of  the  interference,  the  examiner 
of  interferences  takes  jurisdiction  of  the  case  which 
is  then  said  to  become  a  contested  case.  But  in 
spite  of  this  the  primary  examiner  under  the  rules 
still  has  jurisdiction  to  determine  the  several  mo- 
tions mentioned  in  other  rules — as  for  example,  with 
reference  to  the  question  of  non-patentability  of  the 
issues,  and  lack  of  interference  in  fact. 

It  is  next  provided  by  the  rules  that  after  the 
formal  declaration  of  interference  a  preliminary 
statement  must  be  prepared  and  sealed  up  and  filed. 
After  this  has  been  opened  at  a  certain  date  the  ex- 
aminer of  interferences  will  appoint  dates  for  the 
taking  of  testimony.  The  rules  next  prescribe  cer- 
tain motions  which  may  be  brought — as  motion  for 
dissolution  on  various  grounds — all  of  which  have 
to  be  passed  upon  formally  by  the  examiner  of  in- 
terferences and  then  referred  back  to  the  primary 
examiner  for  determination  on  the  merits. 

After  the  several  motions  and  statements  are 


89 


out  of  the  way,  the  next  step  is  the  taking  of  testi- 
mony, which  is  done  according  to  certain  rules  and 
involves  considerable  expense  and  the  expenditure 
of  a  large  amount  of  time,  and  then  after  all  of  this 
is  done  and  the  briefs  prepared,  the  case  comes  up 
for  oral  hearing. 

The  first  hearing  on  the  matter  of  priority  is 
before  the  examiner  of  interferences.  From  his  de- 
cision an  appeal  will  lie  to  the  board  of  examiners- 
in-chief,  and  from  the  board  of  examiners-in-chief 
to  the  Commissioner  in  person.  If  the  Commis- 
sioner's decision  is  not  satisfactory,  either  party  may 
appeal  on  the  matter  of  priority,  under  the  present 
statutes,  to  the  Court  of  Appeals  of  the  District  of 
Columbia,  and  after  the  matter  has  been  decided 
by  this  Court  there  still  remains  a  bill  in  equity 
originated  in  the  Act  of  1836  above  referred  to, 
which  is  in  reality  a  new  suit  and  raises  the  whole 
question  over  again  where  it  can  be  heard  in  the 
Circuit  Court  of  the  United  States  and  afterwards 
taken  to  the  United  States  Circuit  Court  of  Appeals 
for  the  Circuit  in  which  the  suit  under  this  pro- 
vision of  the  statute  is  brought.  Such  a  line  of 
procedure  and  such  a  multitude  of  appeals  and 
such  an  enormous  expense  as  the  same  involves  is 
a  disgrace  to  the  whole  patent  system  of  the  United 
States.  The  condition  is  very  well  described  in  the 


90 


statement  by  his  Honor,  Judge  Duell,  in  a  paper 
presented  before  the  section  on  patent  law  of  the 
American  Bar  Association,  in  1905,  from  which  we 
quote  as  follows : 

"From  the  simple  and  summary  mode  first 
adopted  for  determining  the  question  of  priority  of 
invention,  that  proceeding  by  a  system  of  Patent 
Office  rules,  has  grown  to  be  a  veritable  old  man  of 
the  sea,  and  the  unfortunate  inventor  who  has  be- 
come involved  therein  is  a  second  Sinbad  the  Sailor. 
It  is  known  to  all  who  are  familiar  with  the  practice 
in  interference  proceedings  that  by  motions,  peti- 
tions and  appeals  of  every  conceivable  character  that 
the  ingenuity  of  the  skilled  attorney  can  devise,  in- 
terferences can  be  and  are  prolonged  for  years  to 
the  injury  of  the  public  and  often  to  the  financial 
ruin  of  the  parties." 

The  abuses  that  have  arisen  under  the  present 
system  have  been  fully  and  exhaustively  considered 
in  a  paper  by  Mr.  Joseph  B.  Church  on  some  needed 
reforms  in  interference  practice  read  before  the 
patent  section  of  the  American  Bar  Association  in 
1905,  and  from  such  paper  which  appears  to  cover 
the  case  admirably,  we  take  the  liberty  of  quoting 
the  remedies  proposed,  as  follows : 

"The  remedy  is  at  once  simple  and  complete, 
and  it  is  within  the  power  .of  the  Patent  Office  to 
apply  it  without  additional  legislation  on  the  sub- 
ject." 

"It   is  this:     Restore   to   the  examiner  of  inter- 


91 


ferences  exclusive  authority  to  determine  all  juris- 
dictional  issues,  such  as  questions  involving  pat- 
entability of  the  subject  matter,  the  right  of  an 
applicant  to  make  the  claim,  regularity  in  the 
declaration  and  interference  in  fact." 

"Abolish  all  interlocutory  appeals  in  these  is- 
sues, both  to  the  Commissioner  and  to  the  ex- 
aminers-in-chief." 

"Adopting  the  procedure  of  the  equity  courts  in 
such  cases,  provide  for  the  trial  of  jurisdictional  is- 
sues on  motion,  with  notice,  either  before  testimony 
taken  or  at  final  hearing,  in  analogy  to  like  pro- 
ceedings under  demurrer,  plea  or  answer.  A  de- 
cision sustaining  jurisdiction,  if  rendered  on  motion 
before  testimony  taken,  should  require  that  the  cause 
proceed  to  final  hearing;  if  rendered  after  final 
hearing,  it  should  accompany  judgement  on  the 
merits.  In  either  event,  the  decision  on  the  juris- 
dictional issue  will  be  merged  in  the  final  judgment." 

"A  decision  adverse  to  jurisdiction  should  be 
followed  by  an  order  (decree)  of  dissolution  (dis- 
missal)." 

"In  this  way  all  contentions  of  the  parties  would 
be  embodied  in  a  final  decision,  disposing  entirely 
of  the  controversy,  and  would  be  the  subject  of  ap- 
peal under  sec.  4909  R.  S." 

As  clearly  pointed  out  by  Mr.  Church  in  the 
paper  in  question,  the  change  suggested  therein 
could  be  made  without  departing  from  the  present 
existing  statute  and  without  in  any  respect  ma- 
terially altering  the  general  scheme  at  present  in 


92 


force,  fundamentally  considered.  With  reference 
to  further  procedure  if  the  suggested  alteration  were 
to  be  adopted,  Mr.  Church  says : 

"The  reversal  of  judgment  of  dissolution  would 
be  accompanied  by  an  order  sending  the  case  back 
for  hearing  on  the  merits;  just  as  an  appellate  court, 
on  reversing  the  decree  of  the  trial  court,  dismissing 
a  suit  for  want  of  jurisdiction,  remands  the  case  with 
directions  to  proceed  to  a  hearing  on  the  merits  of 
the  cause." 

"As  a  substitute  for  the  interlocutory  appeals  now 
provided,  and  in  order  to  obtain  the  benefit  of  the 
primary  examiner's  supposed  familiarity  with  the  art 
to  which  the  invention  pertains,  the  examiner  of  in- 
terferences should  be  given  power  to  refer,  at  his 
discretion,  jurisdictional  issues  to  the  primary  ex- 
aminer for  a  preliminary  hearing,  the  latter,  after 
the  manner  of  a  master  in  equity,  reporting  his 
findings  and  conclusions  to  the  examiner  of  inter- 
ferences. Exceptions  may  be  taken  and  filed  to  the 
primary  examiner's  report,  and  a  final  hearing  had 
thereon  before  the  examiner  of  interferences,  who 
shall  thereupon  render  a  decision  on  the  issues 
raised.  If  no  exceptions  are  taken  to  the  primary 
examiner's  report,  and  as  to  matters  not  excepted 
to,  where  exceptions  are  filed,  the  findings  of  the 
primary  examiner  on  questions  of  fact  should,  ordi- 
narily, be  adopted  by  the  examiner  of  interferences." 

"The  introduction  of  a  system  such  as  that  out- 
lined would  not  seriously  conflict  with  the  rules  at 
present  in  force,  but,  with  slight  modifications  and 


93 


amendments,    they   could    readily   be    rendered   com- 
patible therewith." 

The  matter  of  the  existing  abuses  and  the  pro- 
posed reform  of  the  same  suggested  in  Mr.  Church's 
paper  has  been  given  considerable  attention  in  this 
chapter,  because  it  is  felt  that  it  is  something  that 
must  have  early  action  or  serious  consequences  are 
almost  sure  to  follow.  The  writer  has  personal 
knowledge  of  instances  where  fear  of  the  expense 
and  annoying  delays  incident  to  these  long  drawn 
out  interference  proceedings  has  been  a  serious 
detriment  to  the  patent  practice,  and  has  dis- 
couraged many  applicants  from  venturing  to  secure 
that  protection  for  their  meritorious  improvements 
to  which  they  are  justly  entitled  under  the  law. 


CHAPTER  X. 


Final  Notice  of  Allowance;  Payment  of  Final  Fee; 

Transfer  of  Files  to  Issue  Division ;  Withdrawal 

of  Cases  from  Issue;  Issue  of  Patents. 

The  final  proceedings  in  connection  with  an 
application  are  the  sending  by  the  Patent  Office  to 
the  applicant  or  his  attorney,  of  what  is  known  as 
Final  Notice  of  Allowance,  after  all  of  the  points 
in  controversy  connected  with  the  application  have 
been  successfully  disposed  of,  which  final  notice  of 
allowance  is  sent  out  by  the  issue  division  after  the 
files  of  the  case  have  been  transferred  to  the  same 
from  the  examiner  previously  in  control  of  the  ap- 
plication. In  connection  with  this  final  notice  of 
allowance  there  is  always  a  statement  to  the  effect 
that  within  six  months  from  the  date  thereof  the 
final  fee  of  twenty  dollars  must  be  paid  in  order  to 
secure  the  issue  of  patent,  and  other  instructions 
regarding  the  formalities  incident  to  the  procedure. 


95 


At  any  time  within  six  months  from  the  date  of  such 
final  notice  the  final  government  fee  may  be  paid 
to  the  Commissioner,  and  after  the  payment  of  the 
same  the  necessary  preliminary  work  is  done,  and 
three  weeks  later,  approximately,  the  patent  issues. 
It  sometimes  happens  that  after  cases  have 
been  finally  allowed  and  transferred  to  the  issue 
division,  it  is  necessary  to  withdraw  them  from  the 
issue  division,  as  for  example,  when  the  examiner 
finds  some  new  application  filed  which  should  be 
put  in  interference  with  a  case  that  has  been  sent 
to  the  issue  division,  whereupon  on  request  of  the 
primary  examiner  to  the  Commissioner,  the  case 
will  be  taken  from  the  issue  division  and  sent  back 
to  the  primary  examiner  to  be  inserted  in  such  in- 
terference. For  any  reason  or  cause  assigned  by 
the  applicant  or  his  attorney,  it  is  difficult,  how- 
ever, to  get  any  case  withdrawn  from  the  issue 
division,  and  if  a  case  is  found  to  require  amend- 
ment after  it  has  been  passed  to  the  issue  division, 
about  the  only  way  to  accomplish  such  amendment 
is  to  allow  the  case  to  forfeit  for  non-payment  of 
the  final  fee  within  the  six  months  allowed,  and 
then  to  renew  the  application  by  the  payment  of  a 
renewal  fee  of  fifteen  dollars.  Of  course  there  are 
certain  legal  consequences  liable  to  follow  from 


96 


such  action,  but  these  will  not  be  considered  in  de- 
tail here. 

If,  as  stated,  the  final  fee  be  paid  within  the 
six  months  after  the  date  of  the  notice  of  final  al- 
lowance, the  drawings  are  photolithographed  arid 
the  specification  prepared  for  printing,  so  the  patent 
will  issue  on  the  third  Tuesday  after  the  first  Thurs- 
day following  the  payment  of  the  fjnal  fee, 


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